Thursday, 31 December 2009

T 345/07 – Battling For Inventiveness

I like this case because the patentee’s attorney really tried all what could possibly be done in order to establish an inventive step. As the Board did its job well, too, he has failed, but it sure was an honourable defeat.

[...] The patent in suit is directed to a composition for preventing or retarding the formation of gas hydrates. Such compositions already belong to the state of the art as illustrated by document D15, which uses these compositions in order to prevent the formation of gas hydrates. [4.1]

[…] Having regard to this prior art document, the [patentee] submitted that the technical problem underlying the patent in suit was to provide further compositions inhibiting the formation of gas hydrates. [4.3]

As solution to this problem the patent in suit proposes the compositions according to claim 1, which are characterized by the fact that the ether as second additive is one of the listed six individual glycol ethers. [4.4]

[…] In D15 the formation of gas hydrates is inhibited by adding a combination of a first and a second additive, wherein the first additive is a water soluble polymer […] and the second additive is an organic compound, such as ethers. Thus, any composition including those, which contain one of the six individual ethers of the patent in suit, is within the ambit envisaged by the general disclosure of D15 and is taught to be suitable for inhibiting the formation of gas hydrates. The choice of a specific combination of a particular water soluble polymer and a particular ether, i.e. a polyvinyl caprolactam homopolymer and one of the individual six glycol ethers as indicated in present claim 1, has not been shown to result in any technical benefit vis-à-vis the closest state of the art. Therefore, this choice can neither be treated as critical nor as purposive for solving the technical problem underlying the patent in suit, but merely as an arbitrary restriction of no particular technical significance.

A list of further compounds, which according to D15 are also suitable as second additive for inhibiting the formation of gas hydrates and providing a synergistic inhibition effect, explicitly discloses the compound “2-butoxy ethanol”. This name is another expression for the identical ether compound named “ethylene glycol monobutyl ether” in claim 1 of the patent in suit. Thus, the skilled person had a clear and direct teaching in the closest prior art D15 itself on how to solve the technical problem of providing an alternative, namely to use 2-butoxy ethanol as second additive, thereby arriving at the solution proposed by the patent in suit.

For these reasons the subject-matter of claim 1 of the patent in suit turns out to be merely the result of an arbitrary choice made within the ambit of D15 and thus is obvious from the closest prior art alone. [4.7]

The [patentee], however, brought forward that D15 clearly focussed on achieving a synergistic inhibition effect, which could not be obtained with other than the specific combinations of polymers and organic compounds exemplified in Table 1. Therefore, a skilled person would not have dismantled or modified these particular synergistically effective combinations described in that document. However, since the objective technical problem consists merely in providing alternative compositions inhibiting the formation of gas hydrates the presence of a synergistic effect or not is not part of the technical problem to be solved, and therefore is irrelevant for the assessment of inventive step. [4.7.1]

[…] Further, the [patentee] argued that the passage on page 12 indicated that the authors of D15 only “believe[d]” that the synergistic inhibition effect will be observed when using 2-butoxy ethanol implying that they have not been certain thereon. Therefore, in the absence of any expectation of success the skilled man would not have seriously taken these alternatives into consideration. However, when assessing inventive step it is not necessary to establish that the success of an envisaged solution of a technical problem was certain. In order to render a solution obvious it is sufficient to establish that the skilled person would have followed the teaching of the prior art with a reasonable expectation of success (see T 249/88 [8]; T 1053/93 [5.14]; and T 318/02 [2.7.2]). In the present case the passage referred to rather indicates that the proposed alternatives have simply not yet been realized, but gives a clear and direct pointer to the skilled person, which makes it obvious to try the proposed alternatives in order to provide a solution to the technical problem underlying the patent in suit. Therefore, this argument of the [patentee] cannot succeed. [4.7.2]

Further, the [patentee] brought forward that due to the length of the list of possible alternatives indicated [in] D15, a skilled person would have had no incentive to specifically select 2-butoxy ethanol. However, the simple number of alternatives which a skilled person had at his disposition when looking for alternative compositions has no impact on the assessment of obviousness, since a mere arbitrary choice from a host of possible solutions does not in itself involve inventive ingenuity (T 939/92 [2.5.2-3]) [4.7.3]

The [patentee] stated further that D15 did not contain any indication of particularly combining the polyvinyl caprolactam homopolymer disclosed in Table 1 of D15 with 2-butoxy ethanol listed on page 12. However, a disclosure of that particular combination would amount to a disclosure anticipating the subject-matter of claim 1, which is not a prerequisite for successfully attacking inventive step.

The [opponent’s] objection that there is no pointer to this specific combination cannot convince the Board because this is asking for a condition to be met which is meaningless in a situation where the claimed solution merely consists in selecting components at random within the ambit of D15, as no improvement is attributable to the use of the claimed ethers of claim 1 over those defined in D15. [4.7.4]

For these reasons, the Board concludes that the subject-matter of claim 1 of the main request and, due to its identical wording, also the subject-matter of claim 1 of the auxiliary request do not involve an inventive step as required in A 56. Consequently, the main request and the auxiliary request are not allowable. [5] 

I like the expression ‘inventive ingenuity’ used by the Board, but I am not sure that it really corresponds to a requirement of the EPC. And I definitely do not encounter it very often in the inventions I try to protect. ;-)

NB: This decision has also been commented here (in French).

To read the whole decision, click here.

Wednesday, 30 December 2009

T 1120/05 – Deriving Negative Features from Drawings

Claim 1 of the main request concerned an arrangement for managing a herd of freely walking animals, comprising an area (1) for receiving the animals, a milking station (2) located in said area […], and a separation device (3) located in said area for separating an animal from the herd, wherein […]the separation device (3) comprises […] at least one entrance device (13) forming an animal passage (15) leading from the receiving area (1) to the separation zone (11), but not to the milking station (2) […].

The amendment “but not to the milking station (2)” introduces the negative feature that the passage formed by the entrance device of the separation device does not lead from the receiving area to the milking station. This negative feature is not expressly disclosed in the description and in the claims of the patent application as filed. [2.1]

According to the well established jurisprudence of the Boards of Appeal, features may be taken from the drawings if their structure and function are clearly, unmistakably and fully derivable from the drawings (see T 169/83). It goes without saying that it is not possible to derive a negative or missing feature on its own, i.e. without the context of the other, existing features of the claim. It remains to be decided if a combination of features including the negative feature can be derived or not. [2.2]

This approach accepts, arguendo, that the skilled person is actually capable of finding - and indeed willing to search for - negative features in a drawing, albeit in combination with some other features. In the present case the combined feature “[an animal passage (15)] leading from the receiving area (1) to the separation zone (11), but not to the milking station”, i.e. a feature which describes a property of the animal passage lends itself to closer scrutiny, because the term “..., but not to...” establishes a direct connection of the disputed negative feature to an other, undisputedly disclosed feature. An equally good candidate would be the combined feature “an animal passage (15) ... not [leading] to the milking station”. The search for combined features, such as the examples above may even be considered realistic, because there are also other features of this animal passage present in the claim. Therefore, in the present case the board accepts - for the sake of argument only - that the skilled person would look closely at the features related to the animal passage. [2.2.1]

In this case, the question arises whether the skilled person would clearly, unmistakeably and fully derive from the drawings that this animal passage has a further feature beside those explicitly stated in the application, i.e. whether the skilled person would positively realise that this animal passage does have some negative features as well. Were the board to accept that this is the case, then, as a matter of logic, the board would have to establish that the skilled person would, inevitably, realise the presence of further negative features, and potentially a large number thereof. Choosing arbitrarily one of these is not permitted, because the skilled person not only has to realise the possible negative features, but because they were derived from the drawings, he must also establish which one of the features is essential to the invention and which ones are not, see Guidelines, C VI. 3.5.2., see further T 906/97 [5]. The board finds that absent a teaching from the description, the skilled person would be unable establish the essential nature of a single negative feature, seen against a background of a multitude of potentially essential features, even if this selected single negative feature in the drawings could be recognised by the skilled person in the drawings. [2.2.2]

It may be mentioned that case law also confirms that negative features cannot be deduced from a schematic drawing only, see T 170/87 [8.3], followed by T 410/91 [2.1], further see T 278/88 [3.2.3].

[…] More generally, in the context of A 123(2) the original drawings cannot be considered as a reservoir of features from which the applicant or a patent proprietor can draw when amending the claims, see T 832/04 [2.2]. [2.2.3]

Decision T 169/83 requires that “the structure and function” of the negative feature should be clearly, unmistakeably and fully derivable for the skilled person from the drawings. This is not the case here. The represented separation device (3) is provided with an exit device forming an animal passage (15) leading from the separation zone and from here - at least indirectly through the receiving area - to the milking station. In this manner the drawings may also be interpreted as disclosing that the entrance devices of the separation device (3) define a passage leading from the receiving area to the milking station via the separation device (3), the animal passage (15) and the receiving area. It follows that at least the “structure” of the negative feature in question cannot be deduced, let alone be clearly, unmistakably and fully derived from the drawings. [2.2.4]

[…] The passage of the patent specification referred to by the [patentee] […] defines the result to be achieved by the invention, that is to avoid that the animal associates the separation with the automatic milking. However, this result does not necessarily imply the above mentioned negative feature. [2.2.6]

This negative feature therefore adds subject-matter extending beyond the content of the application as filed. Moreover, the board does not consider this undisclosed negative feature as being an allowable disclaimer in the meaning of decision G 1/03, because the anticipation necessitating the amendment (D4) cannot be considered as accidental. [2.3]

Therefore, the main request has to be rejected because [it] contravenes the requirements of A 123(2). [2.4] 

To read the whole decision, click here.

Tuesday, 29 December 2009

T 926/07 – Arguments Are Never Late

[...] According to R 71a EPC 1973, new facts and evidence presented after [the final] date [fixed in the summons for making written submissions in preparation for the oral proceedings (OPs)] need not be considered, unless admitted on the grounds that the subject of the proceedings has changed.

R 71a and A 114(2) EPC 1973, on which it is based, therefore refer to late filed facts and evidence and not to new arguments. The latter may be produced at any stage of the proceedings. [2.1]

Facts are assertions (behauptete Sachverhalte) which may need to be supported by evidence (see Singer/Stauder, EPC, 4th ed., Article 114, point 44). Arguments, on the other hand, are statements (Ausführungen) that result from applying the law to the facts and evidence that have been submitted in time (see T 92/92 [2]). So arguments based on facts submitted in time must be admitted at any stage in opposition or subsequent appeal proceedings. [2.1.1] 

This approach is different from what has been said, for instance, in T 124/87 : “An argument which is presented for the first time at an oral hearing, which combines particular previously filed evidence with a particular previously cited document, may not be admitted for consideration in the exercise of discretion under A 114(2)”. 

To read the whole decision (in German), click here.

Monday, 28 December 2009

T 1427/09 – Using The Wrong Card

The present interlocutory decision deals with an appeal filed electronically. The notice of appeal and the statement setting out the grounds of appeal carried the name of Mr. Friedrich Kühn, who is a European patent attorney, but the electronic filing was done using certificates belonging to I. Elfving and R. Ahlund [who both appear not to be European patent attorneys], respectively.

[…] In the present case, the appeal documents were electronically filed using the technical means of communication addressed in R 2(1) and defined in Article 5(1) of the “Decision of the President of the EPO dated 26 February 2009 concerning the electronic filing of documents” (“2009 Decision”). The dates of transmission and receipt (11 May 2009 for the notice of appeal and 17 June 2009 for the statement setting out the grounds of appeal) were verified by the acknowledgements of receipt issued by the EPO. [5]

As the electronic signatures used for the electronic filing of the appeal documents were not issued to a person authorised to act in the present proceedings (as required by Article 8(2) of the 2009 Decision) but to other individuals, the applicable requirements concerning the authentication of the documents were not met. The 2009 Decision is silent on the legal consequences of any non-compliance with its Article 8(2). [6]

R 2, on which the 2009 Decision is based, authorises the President of the EPO to specify technical means of communication for the filing of documents (R 2(1)) and to permit appropriate means for document authentication where the EPC provides that a document must be signed (R 2(2)). R 2(1) provides for legal consequences in cases where documents are filed through non-approved technical means of communication (T 765/08 [9]). On the other hand, R 2(2) does not specify the legal consequences for any non-compliance with requirements concerning signatures and other means of document authentication. [7]

For documents filed after the filing of the application without the required signature, R 50(3) provides that the EPO shall invite the party concerned to sign the document within a time limit to be specified.

It is appropriate and not in conflict with R 2 to apply R 50(3) to documents filed electronically in appeal proceedings without the electronic signature required under Article 8(2) of the 2009 Decision. In the board’s judgment, the principle that the signature of an unauthorised person shall be treated like a missing signature (T 665/89 [1.4]) should apply not only to handwritten signatures but also to electronic signatures. Consequently, the electronic filing of a document in appeal proceedings accompanied by the electronic signature of an unauthorised person should be treated under R 50(3) like the filing of an unsigned document per mail or telefax in the same proceedings. [8]

Since signed copies of the notice of appeal and the statement setting out the grounds of appeal were filed within the time limit set in the communication of 8 September 2009, said documents retain their original date of receipt (R 50(3), third sentence). [9] 

NB: This decision has also been reported by Pete Pollard.

To read the whole decision, click here

Saturday, 26 December 2009

T 714/07 – Examples Are Presumed To Be Embodiments

The examples of [document] D1 as such do not indicate that the polyisobutene dispersants have functionalities of “greater than 1.3” as required in present claim 1. The examples are, however, considered to be preferred embodiments of the disclosure of a patent application. Therefore, the person skilled in the art will expect that they meet the requirements of the preferred embodiments set out in the description.

Paragraph [0091] of document D1 mentions that the minimum number of succinic groups for each equivalent weight of polyalkenyl substituent group is 1.3 while all the preferred ranges require it to exceed 1.3.

The person skilled in the art thus will conclude that example A-24 discloses that the dispersant of example A-26 has a functionality of 1.56 or less while exceeding 1.3, so that example A-26 anticipates the subject-matter of claim 1. [3.6]

Therefore, document D1 discloses all the features of present claim 1 in combination and deprives the subject-matter of this claim of novelty. [3.7] 

To read the whole decision, click here.

Friday, 25 December 2009

T 1160/07 – Skilled People Ask Experts

One way of “raising the bar” with regard to inventive step is to make the skilled person competent in more than one field of the prior art. There have been several decisions, especially in the biotech sector, where the skilled person was considered to be a skilled team. A similar way of achieving the same effect is to have the skilled person consult one or more experts. 

The present decision is an example of the latter approach. The Board provides a rather confused (and confusing) discussion of who the skilled person is, taking into account different stages of a manufacturing process.

[…] It has been disputed who in the present case is to be considered the person skilled in the art. [7.1]

It is common ground that in the development or design of plastic parts such as shaving razor handles according to the patent in suit or chisel handles according to D10, the product design aspect is important, determining the shape and the structure of the specific part.

In this respect the Board endorses the opinion of the [patent proprietor] insofar as that the product design is primarily the task of product designers, which are familiar with the characteristics of the specific part to be designed and that due to differences in these specific characteristics, e.g. based on the intended use of such a product, the product designer designing shaving razor handles and the product designer designing chisel handles need not necessarily be one and the same person.

It is further undisputed that considering the development of parts of the kind concerned on a time scale, the product designer is active from the very beginning of the development or design of such a product. In this respect the Board further considers the opinion of the [patent proprietor] to be correct that already during the design phase of a specific part attention will be paid to the method, at present the molding method, by which this product will eventually be manufactured.

However, the Board finds that towards the end of the product design phase the manufacturing of such a part, although a matter of concern already earlier on, comes more and more into focus and then remains the predominant issue. [7.2]

Claim 1 concerns solely the manufacture of shaving razor handles as the specific part concerned. This applies correspondingly with respect to D10 which discloses a method for manufacturing chisel handles.

Concerning the knowledge required with respect to the manufacturing aspect it can be left open to what extent the product designer is aware of the possibilities, advantages and constraints underlying the molding methods concerned, since in view of the Board, irrespective of his/her own knowledge, the product designer in the end will consult an expert in the technology of molding small plastic parts, a field of technology encompassing not only shaving razor handles according to claim 1, but also chisel handles according to D10 or, as discussed during the oral proceedings, toothbrushes according to D2/D6. [7.3]

The person skilled in the art for assessing inventive step of the presently claimed method thus can be considered as being a product designer specialized in the specific part to be manufactured who, if not forming a team with an expert in the technology of molding of small plastic parts, will at least consult such an expert.

In either case it is the knowledge of the expert in the technology of molding small parts which is determinative for the choice of the appropriate manufacturing method. [7.4]

To read the whole decision, click here.

Thursday, 24 December 2009

T 1160/07 – Convergence, Moderately

In a recent post I have presented decision T 565/07 (and T 240/04) where auxiliary requests were refused because they were not converging. The present decision shows that not all the Boards apply so strict a standard.

[…] With letter dated 15 May 2009 the [patent proprietor] has (re)filed the auxiliary requests as indicated above.

The [opponent] objected to the admission of these requests mainly for the reason that the independent claims in subsequent requests were not progressively limiting the subject-matter in a convergent manner but instead defined subject-matters which went in different directions, resulting in a non-converging debate. [3.1]

Firstly, the Board notes that the requests numbered 1, 2, 2.1, 3 and 3.1 have already been filed in the opposition proceedings with letter dated 2 April 2007 and have been refiled in reply to the appeal with letter of 3 March 2008, thus are not new to the [opponent]. [3.2]

The Board assumes the [opponent’s] reference to the necessity of having a converging debate when auxiliary requests are filed relates to the present Board’s decision T 47/03 applying such a principle, as previously elaborated in T 1126/97.

The present case has the above-mentioned auxiliary requests 1, 2, 2.1, 3 and 3.1 relating principally to the further embodiments of the shaving razor handle.

Auxiliary request 4 relates to the further embodiment of the shaving razor handle with certain parts of the inner core being thinner than the outer portion, as well as of the first mold cavity having a gate.

Auxiliary requests 6 and 7 relate to the further embodiment of the shaving razor handle’s inner core having a through hole and injecting the outer portion via the through hole.

Auxiliary request 8 combines the embodiments of auxiliary requests 4 and 6. [3.3]

In view of the above, the [opponent] could have a point with respect to auxiliary requests 4, 6, 7 and 8. However, the present case differs from the above cited cases in that these requests were filed with letter of 15 May 2009, i.e. more than two months before the oral proceedings (OPs) (T 49/03 [sic] concerned requests filed just one month before the OPs; in T 1126/97 the requests were filed at the OPs). They further concern features which could easily be understood and dealt with without adjournment of the OPs (Article 13(3) RPBA). [3.4]

Therefore, if you intend to rely on auxiliary requests that do not converge, be sure to file them as early as possible, and well before the OPs.

To read the whole decision, click here

Wednesday, 23 December 2009

T 1160/07 – Wrongful Exercise Of Discretion

The Opposition Division (OD) has exercised its discretion to not admit the pieces of evidence D8 - D11 considering as criteria whether the late filing amounts to an abuse of procedure and whether these documents are of prima facie relevance. [2.4]

The Board agrees with the respondent that if the way in which the department of first instance has exercised its discretion is challenged in an appeal, it is not the function of the Board of Appeal to put itself in the place of that department and consider how it would have exercised its discretion itself. A Board should only overrule the way in which the discretion was exercised if it concludes that it was done according to the wrong principles, or without taking into account the right principles, or in an unreasonable way. [2.5]

In exercising its discretion to not admit documents filed after expiry of the period for opposition an OD has to take into account the relevant facts and circumstances of the case. The question of abuse of proceedings has been addressed correctly by the OD. Others circumstances and facts which should be considered are e.g. whether the documents in question are relied upon in direct response to the communication annexed to the summons for oral proceedings and whether they are prima facie relevant. [2.6]

Concerning the first aspect mentioned above the impugned decision is, however, silent. In the minutes of the oral proceedings (OPs) before the OD it is indicated “regarding the matter of the late filing of documents D8 to D11, the opponent explained essentially that this was in reaction to the provisional opinion set out by the opposition division in its annex to the invitation to the OPs”. Since concerning this circumstantial aspect the impugned decision is totally silent and the minutes only repeat the argument of the [opponent], i.e. no conclusion on this issue is given by the OD, the Board can only conclude that this aspect was not considered in the end.

It is not appropriate to express on the one hand a preliminary opinion in the annex to the summons sent by virtue of R 71a EPC 1973, as required by the Guidelines for Examination (E-III, 6), setting a time limit for filing any submissions expiring 19 March 2007 and on the other and not to admit such submissions and their supporting evidence filed 14 March 2007, i.e. before the set date, without reflecting on the question whether they were a reaction to the OD’s opinion (see in this respect also T 281/00 [2.4]). [2.6.1]

Concerning the second aspect, namely the prima facie relevance, the Board notes that according to the impugned decision the chisel handle according to D10 has a circular symmetry around its central axis, resulting in the conclusion that D10 cannot be considered as an appropriate starting point with respect to a method relating to the production of a shaving razor handle. In this respect the Board is of the opinion that by relying on this aspect of the known chisel handle emphasis has been placed on a feature which, however, lacks any correspondence with the subject-matters of claims 1 of all requests then on file, which neither comprise a corresponding feature defining any cross-sectional shape of the shaving razor handle nor do they imply lack of symmetry of this handle.

Consequently the OD has examined the prima facie relevance of document D10 in a manifestly wrong manner, by considering facts which are irrelevant in this connection. [2.6.2]

Thus, for the reasons given above, the OD has exercised its discretion with respect to the non-admittance of document D10 without taking into account the right principles (point 2.6.1) as well as according to wrong principles (point 2.6.2). For the above reasons D10 is to be considered as forming part of the opposition - and thus appeal - proceedings. [2.7] 

To read the whole decision, click here.

Tuesday, 22 December 2009

T 1854/08 - Notifications by E-mail and Other Procedural Shortcomings

I owe the knowledge of this decision to Laurent Teyssèdre, who has discussed it on his blog (in French).

After having been summoned to oral proceedings (OPs), the applicant filed a new main request and first and second auxiliary requests. In his letter, he requested consequently that a patent be granted on the basis of one of those requests. [III]

On 27 November 2007, the Examinig Division (ED) sent an e-mail to the applicant with the following content: “Dear Mr. White, the ED has discussed the three new requests filed with letter of Nov.5. (I.) These requests are not admitted into the proceedings, pursuant to R 86(3), because they introduce substantial obscurities (A 84). […] (IV.) If no new request is filed which is admissible under R 86(3), then the OPs will be based on the request on which the summons to OPs was based.” [IV]

The applicant did not attend the OPs. At the OPs, the application was refused on the basis of the claims which had been objected to in an annex to the summons to OPs. [V]

[…] In deciding on the basis of the set of claims filed [before the summons to OPs], the ED decided on the basis of a set of claims which was no longer agreed by the applicant because new requests had been filed with letter of 5 November 2007. From this letter, it could be clearly and unambiguously derived that the new main and auxiliary requests were meant to replace the claims filed before. This follows from the fact that the applicant requested in his letter that a patent be granted on the basis of one of the newly filed requests. Hence, deciding on the basis of the old set of claims contravenes directly A 113(2), where it is stated that the EPO shall examine, and decide upon, the EP application only in the text submitted to it, or agreed, by the applicant. [2.1]

By an e-mail of 27 November 2007, the applicant was informed that the three newly filed requests were not admitted into the proceedings, because they introduced substantial obscurities. The applicant was not given any opportunity to present his comments to overcome the negative position expressed in the e-mail. Contrary to that, he had to gather from the e-mail that it was no longer possible to convince the ED. This follows from the fact that the refusal to admit the newly filed request was not presented as a provisional opinion of the division to prepare a discussion in the forthcoming OPs but as a decision which could not be overturned. In the e-mail, it is clearly expressed that “if no new request is filed which is admissible under R 86(3), then the OPs will be based on the request on which the summons to OPs was based”, i.e., that the requests filed on 5 November 2007 were no longer under consideration. This contravenes A 113 (1) where is laid down that the decisions of the EPO may only be based on grounds on which the parties concerned have had an opportunity to present their comments. [2]

As contravening A 113(1) and (2) constitutes a substantive procedural violation, the Board remits the case to the department of first instance for further prosecution (Article 11 RPBA). [3]

Moreover, it is questionable whether an e-mail can constitute a communication under A 96(2) EPC 1973 to file observations within a period to be fixed by the ED. However, as the case has to be remitted for the above mentioned reasons alone, this point has not to be decided in the present case. [4] 

I like the understatement: It is questionable ...

To read the whole decision, click here.

Monday, 21 December 2009

T 546/07 – You Have To See Things In Context

The opposed patent concerns ski bindings for alpine touring, comprising a ski boot support 10 having a front support part 20 on which a front jaw 50 is mounted, and a rear support part 40 on which a heel jaw 80 is mounted, both jaws being shaped to hold a ski boot. The front support part 20 is articulated so that it can pivot about a first axis 1 with respect to a base part 3 fixed to the ski. The rear support part 40 is articulated pivotal about a second pivot axis substantially parallel to the first pivot axis (and identical with the first pivot axis in the embodiment of Fig. 1):

Publication E4 was acknowledged to be the closest prior art. 

The opponent filed an appeal after the opposition had been rejected. It argued that document E4 disclosed embodiments covered by claim 1, taking into account the common general knowledge of the skilled person. In particular, the toe clamp (reference 29 in Fig. 1 of E4) could be considered to be the front jaw. The opponent pointed out that E4 disclosed (col. 3, lines 3-9) that the toe clamp could be positioned in the pivot axis of the support. Moreover, E4 explicitly disclosed (col. 2, lines 42-45) that any holding device allowing to shift the boot while holding it could be used, such as for example front jaws of known bindings for cross-country skiing. Therefore the skilled person would have envisaged to use the “Diamir” binding known from document B19. By replacing the toe clamp of E4 with the front jaw of this binding, a binding according to claim 1 was obtained.

[…] Claim 1 differs from E4 in that the rear support part (reference 12 in E4) is articulated pivotal about a second pivot axis substantially parallel to the first pivot axis (reference 8 in E4). [2.2]

The statements of the appellant concerning the disclosure of document E4 do not invalidate this finding. [2.3]

On the one hand, the toe clamp 29 cannot be considered to be a front support part within the meaning of Claim 1. As a matter of fact, the front support part is part of the ski boot support and has to support the boot. In this it differs from the toe clamp 29, which only has a holding function. It is designed to hinder the boot from detaching upwards and from displacing laterally, respectively. [2.3.1]

On the other hand, the document E4 does not teach, neither explicitly nor implicitly, that any holding device, and in particular the front jaw “Diamir” known from B19, can be used as front jaw.

The Board considers that the skilled person reading a document does not construe individual parts of the disclosure (einzelne Offenbarungsstellen) in isolation but rather in the context of the document as a whole (T 312/94 [2.1]; T 860/06 [1.1.3]).

In the present case, the binding for alpine touring disclosed in E4 aims at a solution to the problem of reducing the lifting effort (Hubarbeit) of the skier. See column 1, lines 37-41.

[“It is the object of the invention to improve a binding for alpine touring of the kind presented above such that the lifting effort when practising alpine touring is reduced even more. Moreover, in many applications the use of a return spring is to be avoided.”]

However, in column 1, lines 28-32 it is disclosed that when bindings for alpine touring having a front releasing boot sole support (vorderer auslösender Sohlenhalter) are used, it is not possible to reduce the lifting effort.

[“Bindings for alpine touring having a front releasing boot sole support necessitated an even greater distance between the boot toes and the pivot axis in order to reach a pivot angle of 90°. Here the lifting effort was still much greater.”]

When reading document E4 the skilled person would, therefore, learn that the goal could not be reached with such a binding for alpine touring. Therefore, he/she would not interpret the expression “holding device” (Haltevorrichtung) in column 2, lines 42-53 to encompass a releasing holding device such as the “Diamir” front jaw of B19, but only front jaws without security function. [2.3.2]

Therefore, E4 does not disclose all the features of claim 1 and is not novelty-destructive for the claimed subject-matter. [2.4]

To read the whole decision (in German), click here.

Saturday, 19 December 2009

T 500/07 - What Makes A Transfer A Transfer

These days I come across quite a lot of decisions on transfers of opponent status. Here is one of them, where the Board had to get into Delaware state law.

The patent was opposed by the Engelhard Corporation. [II]

During the oral proceedings before the Opposition Division (OD), the opponent informed that it had been renamed in BASF Catalyst LLC. [V]

When assessing the question whether the Engelhard Corporation in whose name the opposition was filed and the BASF Catalysts LLC represented in the proceedings before the OD correspond to the same legal personality, the document entitled “Certificate of Conversion to Limited Liability Company of Engelhard Corporation to BASF Catalysts LLC” has to be considered.

Under point 6 it is stipulated: “When the Corporation has been converted to a Delaware limited liability company pursuant to Section 18-214 of the Delaware Limited Liability Company Act and to Section 266 of the General Corporation Law of the State of Delaware, the limited liability company will, for all purposes of the laws of the State of Delaware, be the same entity as the converting Corporation. For all purposes of the laws of the State of Delaware, the rights, privileges, powers and interest in property of the converting Corporation, as well as the debts, liabilities and duties of the Corporation, will not as a consequence of the conversion, be transferred to the Delaware limited liability company; the converting Corporation will not wind up its affairs or pay its liabilities and distribute its assets, the conversion will not constitute a dissolution of the Corporation, and the conversion will constitute a continuation of the existence of the converting Corporation in the form of a Delaware limited liability company.”

[There are no doubts on the authenticity of the document,] all the more as the provision of section 18-214 (f) of the Delaware Limited Liability Company Act reads: “When any conversion shall have become effective under this section, for all purposes of the laws of the State of Delaware, all of the rights, privileges and powers of the other entity that has converted, and all property, real, personal and mixed, and all debts due to such other entity, as well as all other things and causes of action belonging to such other entity, shall remain vested in the domestic limited liability company to which such other entity has converted and shall be the property of such domestic limited liability company, and the title to any real property vested by deed or otherwise in such other entity shall not revert or be in any way impaired by reason of this chapter; but all rights of creditors and all liens upon any property of such other entity shall be preserved unimpaired, and all debts, liabilities and duties of the other entity that has converted shall remain attached to the domestic limited liability company to which such other entity has converted, and may be enforced against it to the same extent as if said debts, liabilities and duties had originally been incurred or contracted by it in its capacity as a domestic limited liability company. The rights, privileges, powers and interests in property of the other entity, as well as the debts, liabilities and duties of the other entity, shall not be deemed, as a consequence of the conversion, to have been transferred to the domestic limited liability company to which such other entity has converted for any purpose of the laws of the State of Delaware.”

Therefore one has to act on the assumption that the transformation from the corporate structure ‘corporation’ to a ‘limited liability company’ preserves the legal identity precisely because there is no transfer of assets (Vermögenswerte) (“shall not be deemed … to have been transferred”) and all assets and liabilities (Aktiva und Passiva) remain unchanged with the company (“shall remain vested in the domestic limited liability company”). [2.1.1]

[…] R 20 EPC 1973 is not applicable as there has not been any transfer of rights; the company acting as opponent has always remained the same. It has only changed its name. Therefore, there could not have been any transfer of the opponent status. […]

G 2/04 deals with the transfer of the opponent status; it cannot contribute to the assessment of the present case precisely because the opponent status has not been transferred.

T 413/02 and T 478/99 are not relevant for the same reason.

In decision T 870/92 [2.1], the Board explains : “What is relevant for the admissibility of the opposition is that the real identity of the opponent is clear at the time of filing of the opposition. Considering the circumstances of the case, one cannot interpret the additional indication of the business division (Geschäftsbereich) to be an indication of the name of another company than the company of the opponent. The evidence submitted in the appeal proceedings show that even before the foundation of the Schiess Kopp Werkzeugmaschinen GmbH there was a Schiess Aktiengesellschaft (with a division “Schiess Kopp”) and that, therefore, the indication “Schiess Aktiengesellschaft, Bereich Schiess-Kopp” could only designate the Schiess Aktiengesellschaft. The latter was entitled to file an opposition against the contested patent (A 99(1), first sentence, EPC).”

This decision cannot support the view of the patentee as in the present case the identity of the opponent at the time of filing of the opposition is undisputed. [2.1.2] 

To read the whole decision (in German), click here.

Friday, 18 December 2009

T 725/05 – Res Judicata Is A Narrow Thing

Good things come in threes. After having considered what T 725/05 has to say on obiter dicta (see my earlier post) and on undue extension (see my preceding post), let me come back on this decision one last time. 

The patent proprietor pointed out that the decision the Board was about to take would be contradictory to decision T 500/01, which concerned the parent application of the divisional application which resulted in the patent that is the object of the present decision.
 […] In consideration of what has been said above, the Board reaches the decision that the application as originally filed refers to CDRs which are defined according to Kabat, or according to the alternate definition of Chotia. Since the Parent Application as originally filed does not refer to CDRs according to Chotia, the divisional application contains subject-matter going beyond the content of the earlier application as filed and does not meet the requirements of A 76(1). [25]

The [patentee] has argued that this decision would contradict decision T 500/01, taken by this Board in a different composition and referring to the patent granted on the basis of the parent application. He has put forward that the Board in decision T 500/01 has already performed an extensive analysis of the amendments to the description identical to [those] of the present divisional application as filed. The [patentee] stresses that the Board, in decision T 500/01 came to the conclusion that these passages did not provide support or basis for a definition of CDRs which is both Kabat and Chotia. [26]

It has to be emphasised that the patent that was the subject of the Board’s decision in case T 500/01 contained an explicit statement that the term CDRs was as defined by Kabat together with Chotia, both in the description and in claim 1. Whereas the situation underlying the present divisional application differs therefrom in so far as no such explicit definition of CDRs Kabat together with Chotia is present. However it is stated on page 4, starting in line 19, that Chotia provided an alternate definition of CDRs, which [means] according to this decision, that CDRs are either Kabat CDRs or Chotia CDRs. This passage, which was identically contained in the Parent Application as granted was indeed examined by the Board in decision T 500/01 and it was decided, as correctly stated by the [patentee], that it did not provide support or basis for a “combination” definition of CDRs, Kabat together with Chotia.

The issue before the Board in case T 500/01 was whether the expression “Kabat together with Chotia” had a basis in the parent application as filed.

The issue before the Board in the present case is whether page 4, line 9 to page 5, line 7 of the present divisional application as filed provides support for an alternate definition of CDRs, that is for Kabat or Chotia, and, if the answer is yes, whether this has a basis in the parent application as filed. Deciding in the present case that the definition of CDRs in the divisional application is Kabat or Chotia is not, therefore, contradictory to decision T 500/01.

For the same reason the Board’s present decision is not contradictory to T 500/01 [20-23], where it was decided that a claim restricted to a method of producing a humanized immunoglobulin light chain met the requirements of A 123(2). As all three “Chotia CDRs" of the light chain are subsets of the respective Kabat CDRs, for this embodiment the term "Kabat together with Chotia" was identical to Kabat CDR as disclosed in the parent application as originally filed. Therefore the Board did not see a violation of A 123(2) EPC.

This is a different situation compared to the present case where the Board has decided that the term CDRs as defined by Kabat or Chotia adds subject-matter in the divisional application compared with the parent application as filed which is contrary to A 76(1). [27]

To read the whole decision, click here.

Thursday, 17 December 2009

T 725/05 – A Fateful Alternative

The present decision, already discussed in my preceding post, also contains a textbook example of how an amendment of the description can lead to an undue extension of the claimed subject-matter.

Besides a few minor amendments, which do not have to be considered in the context of A 76(1), the present divisional application as originally filed is distinguished from the parent application as originally filed by the insertion of two paragraphs.

Firstly, by referring to the disclosure in document D4, the original definition of complementary determining regions (CDRs) according to Kabat is described. Then it is stated that “more recently Chotia et al have given an alternate definition of the hypervariable regions or CDRs …”. The term “Chotia CDR” is then introduced and it is mentioned that for five of the six CDRs the “Chotia CDRs” are subsets of the Kabat CDRs. The single exception to this is the first CDR on the heavy chain (CDR H1) where the “Chotia CDR” contains amino acids 26 to 30 that are not part of the Kabat CDR.

The description goes on to discuss prior art document D3. It is said that therein a humanised antibody was disclosed wherein the Kabat CDRs were transferred from a donor (a mouse) to a predetermined human framework. Additionally, in order to improve the humanised antibody’s binding affinity and its ability to lyse target cells, two mouse amino acids were transferred which were positioned in “Chotia CDR H1”, but no other mouse amino acids. [15]

The [patentee] argues, that this part of the description, not contained in the parent application as originally filed, has been introduced in the section headed “Background of the Invention”, which was immediately followed by the section “Summary of the Invention”. It referred therefore merely to the recognition of a disclosure in the state of the art, which according to the case law of the Boards of Appeal, e.g. decision T 11/82, cannot be regarded as added subject-matter. It was evident that the content of the introduced paragraphs had no “dictionary function” in the sense that a patent, being a legal document, may define technical terms and determine how a skilled person has to interpret a specific term when used in the description or in the claims. Rather the skilled reader, knowing from document D5 that Chotia gave no separate CDR definition, would have disregarded their teaching as being misleading and as having no impact on the definition of the term CDR.

[…] The Appellant argued further, that the skilled reader after having reached the conclusion to disregard the teaching on page 4, line 9 to page 5, line 7 of the divisional application as originally filed, as being confusing and misleading, would have found evidence that the term CDRs had to be understood as referring to Kabat CDR’s at several passages of the application as filed. [16]

Opponent 03 considered the introduced paragraphs of the description to disclose an alternate definition of CDRs. Opponent 05 argued that the newly introduced passages of the description, although not explicitly stating it, have to be interpreted as referring to a definition of CDRs as meaning Kabat together with Chotia. [17]

[…] Decision T 11/82 [22] states that the mere addition to the description of a reference to prior art cannot reasonably be interpreted as the addition of “subject-matter” contrary to A 123(2). Nor is it inevitable that the addition of a discussion of the advantages of the invention with reference to such prior art would constitute a contravention of that Article. Whether it did so would clearly depend on the actual language used and the circumstances of the case. [19]

However, the discussion of D5 [in] the divisional application as filed is not “the mere addition to the description of a reference to prior art”. In fact, by stating that it gives an alternate definition of the hypervariable regions or CDRs, it goes far beyond the disclosure in said document which expressly mentions […] that it refers to loops, whose “limits are somewhat different from those of the complementarity determining regions defined by Kabat”. By immediately thereafter introducing the term “Chotia CDR” as being an alternate definition for “Kabat CDR”, this new part of the description provides the public with the instruction that the term “CDR” may be Kabat CDR or “Chotia CDR”. […] As decision T 11/82 does not refer to a situation where the analyses and discussion of a prior art document goes [sic] far beyond the actual disclosure in said document, it is not relevant for the present case. [20]

Although the added parts of the description have been introduced in the section “Background of the Invention” their content is considered by the Board to have an essential impact on the skilled reader’s interpretation of the term CDR in the following parts of the application. The reader is provided with the technical teaching that, besides the generally accepted definition of CDRs according to Kabat, there is another, alternate definition of this term according to Chotia. […] [21]

The Board sees no reason why the skilled reader should disregard the clear information conveyed by the disclosure of the divisional application as filed. [22]

The Appellant relied on paragraph [0040] of the patent as granted, which he considered to give a definition for CDRs and to be a basis for the assumption that the term CDRs in the application means Kabat CDRs only. This passage reads: “As used herein, the term "framework region" refers to those portions of immunoglobulin light and heavy chain variable regions that are relatively conserved (i.e., other than the CDRs) among different immunoglobulins in a single species, as defined by Kabat, et al., op. cit. As used herein a "human-like framework region" is a framework region that in each existing chain comprises at least about 70 or more amino acid residues, typically 75 or 85 or more residues, identical to those in a human immunoglobulin.” The first sentence of this passage states that, according to Kabat, framework regions, other than CDRs, are relatively conserved. Thus, the information given does not concern the actual extent of framework regions, by disclosing those amino acid residues that are part thereof, but concerns their degree of conservation. The second sentence defines the term “human like framework regions”. Therefore, this passage does not provide a definition of the term CDRs. [23]

The second paragraph referred to by the Appellant is paragraph [0046] of the patent as granted. This paragraph refers to document D15 and states that its disclosure is “excluded from coverage”. The Appellant seems to argue that a reference to this document which itself refers to CDRs as being Kabat CDRs has to be considered as a basis for finding that the same term when used in the present application also means Kabat CDRs only. The Board cannot agree. The acknowledgement of the disclosure in a prior art document is no basis for the allegation that a technical term defined in this document in a specific way has to be interpreted in an identical way in the present application, which on pages 3 and 4 contains an explicit statement that the term is defined in a different manner. [24]

[…] the Board reaches the decision that the application as originally filed refers to CDRs which are defined according to Kabat, or according to the alternate definition of Chotia. Since the parent application as originally filed does not refer to CDRs according to Chotia, the divisional application contains subject-matter going beyond the content of the earlier application as filed and does not meet the requirements of A 76(1). [25] 

To read the whole decision, click here.

Wednesday, 16 December 2009

T 725/05 – Obiter Dicta And The Right To Be Heard

[…] The [decision of the Opposition Division (OD)] reads on page 15, point (5), […]: "For the reasons discussed in items 2 - 4, none of the requests on file meets the requirements of the EPC, particularly of A 76(1), 123(2) and 123(3). Consequently, the patent is revoked pursuant to A 102(1).” [2]

This is followed by pages 16 to 19 of the Annex, wherein the OD expresses its opinion with regard to the requirements of A 83, sufficiency of disclosure. The introductory paragraph on page 16, point 6, reads: “Although not being a reason for the decision, the OD wishes to express an opinion to other topics that had been discussed in extensio [sic] during the procedure in writing.” [3]

It is evident from the minutes of the oral proceedings (OPs) before the OD, that the requirements of A 83 were not an issue discussed at the OPs. [4]

The Appellant infers from this situation that his right to be heard has been violated (A 113(1)). The addition of such considerations, which were not an issue at the OPs, to a decision might be appropriate for the Boards of Appeal or another last instance court, but not for an OD. The OD’s considerations on A 83 might have negatively influenced their decision with regard to added matter (A 76(1), 123(2) and 123(3)). Finally, the content of pages 16 to 19 of the appealed decision could lead to detrimental effects for the Appellant, for instance in proceedings before national courts.

By referring to decision T 900/02, the Appellant emphasised that justice must not only be done but must be seen to be done. Thus, the addition of these considerations to the written decision amounted to a substantial procedural violation. [5]

With regard to the nature and the significance of pages 16 to 19 of the appealed decision the Board notes that their content is marked as “not being a reason for the decision”. Thus, the content of these pages forms an obiter dictum, a remark or observation made by a deciding body that, although included in the papers of the decision, does not form part of the actual decision. On the other hand those parts of the appealed decision which are marked as “Reasons for the decision” and which end on the bottom of page 15 with the “Decision”, exclusively refer to issues on which the parties had ample opportunity to comment at the OPs before the OD. Thus, the parties right to be heard, which in A 113(1) is defined as meaning that they had an opportunity to present their comments (in writing and orally) on all grounds or evidence on which a decision of the EPO (here an OD) is based, has not been violated.

Decision T 900/02, referred to by the Appellant, is concerned with a suspicion of partiality, inevitably arising if a member of an OD first solicits and then accepts employment with a firm in which a partner or other employee is conducting a case pending before that member. This situation has nothing to do with the situation underlying the present case. The findings in decision T 900/02 are therefore not considered to be relevant for the present case. [6]

The Boards of Appeal, although in a procedurally different situation, have already examined whether or not a party to an inter partes proceedings can be adversely affected by an obiter dictum contained in a decision of an OD. The Board in decision T 473/98 decided that this is not the case and that moreover the inclusion of obiter dicta is appropriate for an OD as it may obviate the need for remittal in the event its decision (in this case revocation of the patent) is reversed on appeal (see point 2 of the reasons). [7]

A 76(1), 123(2) and 123(3) all are concerned with the issue of “added matter”. A 83 relates to sufficiency of disclosure. The Board is convinced that all requirements that have to be met by a European patent application or a granted patent which are laid down in the different Articles and Rules of the EPC have to be seen and considered as an integral whole. However, in the absence of any specific reference by the Appellant to an aspect or argument in either the reasons for the decision or in the obiter dictum, the Board does not see that the OD’s decision on added matter has been influenced by its opinion on sufficiency of disclosure. Moreover, the Board cannot duplicate Appellant’s suspicion that this could be seen differently by another deciding body, for instance a national court. [8]

For all these reasons the Board comes to the decision that the OD by adding an obiter dictum at the end of the appealed decision had not made a substantial procedural mistake which would require remittal of the case to the department of first instance for further prosecution according to A 111(1). [9] 

This decision has even more to offer. We'll see that tomorrow, if you like.

To read the whole decision, click here

Tuesday, 15 December 2009

T 1100/07 – A Crucial Witness Must Be Heard

This decision deals with the refusal of the Opposition Division (OD) to hear two witnesses on the subject of a prior public use.

[…] In relation to the hearing of witnesses, the Board takes the relevant principles to be:

A party is entitled to adduce evidence by any of the methods set out in A 117. The deciding body cannot choose the evidence which it considers sufficient for establishing the truth: T 474/04 [8]. [2.1]

Nevertheless, it is the function of a witness to confirm what has been alleged (T 543/95) and not to fill in the gaps in facts brought forward to support the case (T 374/02 [1.3, 2nd §]). For this reason, it is necessary that a party who wishes to adduce evidence by means of a witness should indicate what factual details it wishes to prove by this means (T 374/02, [1.3; 1st §]). [2.2]

The credibility (and this includes the reliability) of a witness can only be evaluated by hearing his oral evidence (J 10/04 [3]). If the maker of a statement is also offered as a witness, it is thus wrong to evaluate his written evidence without hearing him. [2.3]

[…] The sole question on which the OD concentrated in considering the issue of public prior use was whether or not the vehicle which was sold by Eichhoff to Hannover City had a storage reel for a hose. The OD concluded that since documents E8 were insufficient to prove that the hose reel and thus all features of the claim were present, no reason had been seen to hear witnesses. [3.2]

[…] Turning to the OD’s decision not to hear the witnesses, first, as to the offer of Mr Lonke, the Board concludes that the OD was justified in deciding not to hear him. In the notice of opposition he was offered as a witness to prove that the device for the hose-guide depicted in the drawing E8/4 was configured in accordance with the patent, and was delivered on a vehicle to Hannover City. As was pointed out by the OD in its communication of 21 December 2006, however, the drawing E8/4 does not show a reel for winding up a hose and so the evidence offered did not relate to the issue of the hose reel. Although the offer of Mr Lonke as a witness was repeated in the appellant’s letter of 6 February 2007, he was here only offered as witness to confirm what was stated in the letter, which itself only consisted of assertions about what various documents showed, in particular E8/5 and E8/6. The documents, however, spoke for themselves and Mr Lonke’s confirmation of what the documents showed could add nothing relevant to the case. [5]

As to Mr Fichte, however, the position is different. It is true that the content of his statutory declaration was unsatisfactory. For example, he did not tie the brochure he mentioned to E8/1 or E8/5, he did not state precisely when the lorries he refers to were sold or to whom, nor did he give any details of what was mounted on the vehicles. However, he was also offered as a witness and this was not just to confirm the truth of his declaration. When the letter of 6 February 2007 is read as a whole, including the statement about what the statutory declaration was said to contain, and taken with the other evidence and what was asserted in the notice of opposition, it appears to the Board that he was being offered as a witness to give evidence about the technical details of the lorry which had been sold to Hannover City. One of these technical details concerned the hose reel which was said to be mounted on the vehicle, which was the single point on which the OD expressed itself as not being satisfied about the prior use. [6]

While the OD was correct in saying that Mr Fichte’s statutory declaration as to facts taking place 20 years previously needed to be considered with care, the OD appears to have overlooked that he was not being offered merely to confirm the contents of the statement. In any event, given that he was being offered as a witness, it was incorrect to evaluate his written evidence without hearing him. [7]

As to the patentee’s other arguments, it is true that Mr Fichte’s statement was not specific about the details of the vehicle but, again, he was also being offered as a witness to deal with the technical details of the vehicle and there cannot be any real doubt about what it was being said he could deal with in his evidence as a witness, particularly in view of the annotations on E8/6 filed with his statement. The respondent was in a position to know that Mr Fichte might corroborate the fact of the existence of the hose reel if the OD remained in doubt on the basis of the other evidence. The respondent was thus in a position to prepare auxiliary requests to meet this eventuality if the OD had decided to summon Mr Fichte. [8]

The decision not to hear Mr Fichte was thus wrong and may have affected the outcome of the case, at least as regards the proprietor’s auxiliary request. In the circumstances, the decision as a whole should be set aside and the case remitted to the OD so that the evidence of Mr Fichte can be heard. [9]

Since the appellant was entitled under the EPC to adduce evidence by any of the methods set out in A 117, the failure to allow it to do so constituted a substantial procedural violation. Since the decision not to hear Mr Fichte may have affected the outcome of the case, it would also be equitable to reimburse the appeal fee. [10]

To read the whole decision, click here.

Monday, 14 December 2009

T 1774/07 – Unallowable But Not Inadmissible

The Board agrees with the [patentee] that the statement of the grounds of appeal contests the inventiveness of the claimed subject-matter by basing itself on a combination of documents which cannot manifestly legally succeed.

In fact, one of these documents, i.e. D1, having been published after the filing date of the patent in suit, can only be state of the art in virtue of A 54(3) and is not a state of the art which can be used in discussing inventive step.
However, the fact that the appellant’s arguments are erroneous and cannot succeed has no bearing on the admissibility of the appeal as the statement of the grounds of appeal contests with facts and arguments the reasoning of the decision under appeal and it thus specifies the legal and factual reasons on which the case for setting aside the decision is based.

Therefore, the appeal complies formally with the requirements of A 108, third sentence, and R 99(2). Moreover, it is undisputed that the appeal complies with all the other requirements of A 106 to 108. [1]

To read the whole decision, click here.

Saturday, 12 December 2009

T 508/08 – We Have No Ways To Make ’Em Talk !

The present decision shows that the Boards are not all-powerful with respect to the first instance divisions.

Two appeals were lodged against the decision of the opposition division (OD) whereby the European patent was maintained on the basis of a request filed during oral proceedings (OPs). [I]

This request was headed “Second amended main request - as amended during OPs” [II]

[The patentee] requested that the written decision as well as several paragraphs of the accompanying minutes of the OPs be corrected. It submitted that the minutes were inaccurate by stating in paragraph 20 that, after discussion of the main request filed on 6 November 2006, “all requests on file” were withdrawn. This should have referred only to withdrawal of “all the auxiliary requests on file” since the main request was not withdrawn but rather the subject of a decision rejecting it for failure to comply with A 123(2) EPC. The errors in the decision were the omission of that rejection of the main request. [III]

The OD has at no time reacted in any way to the requests for correction. [V] […]

It is common ground between the parties that the opposition division should have responded to [the patentee’s] requests for corrections of the minutes of the OPs. The board also agrees.

As was stated in the decision T 1198/97 [7]: “Even when an appeal has been filed, only the department of first instance before which the OPs took place is competent and at the same time also obliged to decide in first instance on a request concerning the contents of the minutes of OPs held before it, firstly because it is their competence and duty under R 76 EPC 1973 to draw up the minutes correctly and completely and secondly because, if anybody, only the members of this department know what has happened and has been said or not during the OPs before it.” [1]

Unfortunately, if the first instance (in this case, the OD) sees fit to ignore its obligation, there is nothing the board can do in this respect. The board has no power to compel the OD to discharge its obligations. Appellant I requested that the board defer consideration of its appeal until after the OD dealt with the request for corrections but it would appear that, if the board had adopted that course, the appeals could have been paralysed by the OD’s permanent inactivity. Moreover, simply deferring all action in appeal proceedings would be contrary to the public interest in resolving disputes over the existence or extent of patent protection. Accordingly, while it is a matter of great regret that the OD did not react to the request for correction, the board must deal with the case as best it can in the absence of such reaction. In this connection, it goes without saying that, while the OD may be open to criticism for ignoring that request, such criticism must not prevent a wholly objective assessment of the evidence provided by the OD’s decision and its minutes of the OPs before it. [2] 

As the parties’ accounts of the OPs are contradictory, the Board goes on to decide which version is, in the light of the available evidence, more likely to be correct. It comes to the conclusion that it is more likely that the patentee’s account is not correct. As a consequence, the patentee is not adversely affected by the decision and its appeal is rejected as inadmissible. 

This decision has already been commented (in French) by Laurent Teyssèdre on his blog. He draws the conclusion that patentees should be very careful when formulating their amendments and/or any withdrawal of requests.

To read the whole decision, click here.

Friday, 11 December 2009

T 1502/08 – Citing Drawbacks Is Not Teaching Away

Be warned - the present decision might definitely change your perception of Tex-Mex food. If you read on, never again will you be able to eat tacos without checking the precise shape of their shells.

The subject-matter of the present invention concerns stable, self-standing taco shells.

Document D1, which constitutes the closest prior art, is also concerned with stable self-standing taco shells, which, like the taco shells of the present application, consist of a first and a second sidewall, the taco shells being configured such that the ratio height of the shell to width of the base is within the range of 1.50 to 4.0. The two sidewalls are connected by a W-shaped bottom.

Accordingly, the technical problem to be solved is the provision of structurally simpler, stable and self-standing taco shells. This problem was solved by replacing the W-shaped base according to D1 by a flat base. In the light of the overall teaching of the present application, the board is convinced that the problem has been plausibly solved.

The provision of structurally simpler products may provide a valuable contribution to the state of the art and therefore give rise to an inventive step provided that the state of the art does not hint at the proposed solution and/or the simpler structure is not the result of concessions made in connection with other properties of the product.

In the present case, it is noted that taco shells having a flat bottom are discussed in D1. However, providing a plurality of support points at different elevations, which causes the taco shell to be unstable when it is supported by its base, instead of providing coplanar support points, such a taco shell is in the eyes of the author of D1 not considered to be sufficiently stable.

This passage does not teach away from using taco shells with a flat base. It rather tells the skilled person that there is a trade-off between simplicity of structure on the one hand and maximum stability on the other hand: if one is prepared to sacrifice maximum stability and accept that the taco shell does not stand perfectly when put onto an even surface but might wobble slightly, then a structurally simpler flat base is feasible.

Sacrificing stability in favour of a simpler structure does therefore not involve an inventive step in the present case, so the requirements of A 56 are not met. [3.2] 

To read the whole decision, click here.

Thursday, 10 December 2009

T 1014/05 - No Blind Remittal

[…] The [patent proprietor] filed amended claims according to eight auxiliary requests. [X]

The [patent proprietor’s] final requests were as follows. Main request: to maintain the patent on the basis of the last main request submitted in the oral proceedings; alternatively, as first to third auxiliary requests: to maintain the patent on the basis of the latest-filed auxiliary requests I, II and III and alternatively, as a fourth auxiliary request: to remit the case to the first instance. [XIV] 

Having rejected the main request (as contrary to A 76(1) EPC) and the first, second, and third auxiliary requests (as late filed and contrary to the principle of procedural economy), the Board has to deal with the request for remittal.

Since the board first has to decide on the [patent proprietor’s] higher ranking requests, the question arises as to the basis upon which the case should be remitted to the first instance, as the first instance would be bound by the ratio decidendi of the board, A 111(2) EPC 1973. As the [patent proprietor] cannot reasonably have meant remittal after a decision on the higher ranking requests, the board interprets the fourth auxiliary request as actually meaning that the case should be remitted to the first instance in order to decide on the higher ranking requests. [5.1]

According to A 111(1) EPC 1973, second sentence, the board of appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution. The board consequently has a discretion as to whether to remit the case to the first instance or not. The relevant jurisprudence of the boards of appeal reflects this discretion, which is exercised according to the circumstances of the individual case. [5.2]

In the present case the board had to decide on an appeal filed against the decision by the opposition division finding, inter alia, that the ground for opposition under A 100(c) EPC 1973 (in conjunction with A 76(1) EPC 1973) did not prejudice the maintenance of the patent unamended. The amendments made in accordance with the main request, which were admitted by the board, had no substantial influence on the meaning, in the given context, of the feature which was found to be contrary to A 76(1) EPC 1973. The relevant issue of the main request thus clearly relates to the case under appeal which was discussed with the parties and which had to be decided by the board. As the board had already come to a conclusion on whether the claims according to the [patent proprietor’s] main request satisfied A 76(1) EPC 1973, and had decided not to admit the [patent proprietor’s] first, second and third auxiliary requests, the board found that remitting the case to the first instance was neither necessary nor appropriate under the circumstances. Hence the board did not allow the [patent proprietor’s] fourth auxiliary request for remittal. [5.3]

Since the [patent proprietor’s] main request is not allowable, the [patent proprietor’s] first, second and third auxiliary requests are not admitted into the proceedings and the [patent proprietor’s] fourth auxiliary request for remittal is not allowed, the patent must be revoked, A 101(3)(b) EPC. [6] 

The present decision shows that a Board of appeal will only consider a remittal if it has identified at least one set of claims which appears to have overcome or bypassed the grounds for rejection of the set of claims on file before the first instance. A “blind” remittal based on auxiliary requests the Board has not considered so far is not accepted. In other words, if N requests have been found inadmissible or unallowable, the N+1st (auxiliary) request cannot consist in a request for remittal, or it will be rejected.

What I find surprising, though, is that the Board acknowledges that there are higher ranking requests but nevertheless revokes the patent (apparently) without considering them at all.

To read the whole decision, click here.