T 601/06 - Too Late for Liberation

The appellant requested in its letter dated 3 April 2009 that the oral proceedings (OPs) be postponed for the reasons that 5 May 2009 was a public holiday in the Netherlands [Liberation Day], the appellant’s representative had firmly booked a holiday for that date and there was no other representative available to replace him due to the holiday season. The representative indicated that the other party had orally agreed to the request.

According to Article 15(2) of the Rules of Procedure of the Boards of Appeal (RPBA), a change of date for OPs “may exceptionally be allowed in the Board’s discretion”. Examples of circumstances that can be taken into account by exercising this discretion are given in the Notice of the Vice-President of DG3 dated 16 July 2007. According to this notice serious substantive reasons to request the change of the date may be, for instance, a previously notified summons to OPs of the same party in other proceedings before the EPO or a national court, serious illness, a case of death within the family, the marriage of a person whose attendance in OPs is relevant, military service or other obligatory performance of civic duties, or holidays which have already been firmly booked before the notification of the summons to OPs. Any request to fix another date shall be filed as soon as possible after the grounds preventing the party concerned from attending the OPs have arisen.

Although the board accepts on the basis of the representative’s statement with respect to the major importance of this holiday to him and his family that he had a firmly booked holiday on the date set for OPs before the notification of the summons, the board considers the request to be late filed. The representative should have been aware when receiving the summons, i.e. at the end of February, that he would be prevented from attending the OPs and should have filed his request immediately. Filing the request more than one month later is not considered to fulfil the requirement of “as far in advance of the appointed date as possible” as required under Article 15(2) RPBA or “as soon as possible” as required in the Notice of the Vice-President of DG3. Therefore, the request does not satisfy the conditions given in the Vice-President’s Notice and in the Rules of Procedure.

[…] In view of the presented importance of the holiday for the representative, as a courtesy the board therefore made an attempt to fix a date within a period of about two months from the date of the request. As no alternative date suitable for the five-member board could be agreed with the parties, the date of 5 May 2009 for the hearing was maintained.

The representative of the appellant argued that, considering the need for consulting the client and the opponent, his request for postponement was not late filed and that the request had to be granted. This argument does not convince the board. The reason for the request was a firmly booked holiday of the representative, i.e. a personal reason. It would not be usual for the representative to need the consent of his client before filing such a request based on a personal reason. […] Even assuming that all the consultations mentioned by the appellant’s representative were necessary, the use of modern communication means and according the appropriate urgency to the matter should not result in a delay of more than a few days.

[…] Taking into account the specific circumstances (a case of death within the family), the request for postponement in [T 514/06] was not late filed. Thus, the decision to refuse the present request maintains a uniform application of the law. [2.1]

To read the whole decision, click here.

T 1562/06 - Exhaustion ? Who Has Said Exhaustion ?

The appellant’s sole objection of lack of novelty relies on the application of the principle indicated in the decision T 998/99 that priority can only be claimed once from a particular priority document for a particular invention. The board however agrees with the conclusions in the subsequent decisions T 15/01 and T 5/05, according to which the conclusion reached in T 998/99 is not valid. Therefore the document D1 does not form part of the prior art according to A 54(3). [2.1] 

Even though I tend to agree, I find it regrettable that the Boards, after the very controversial decision T 998/99 (L’Oréal), only treated this decision with contempt and did not refer the question to the Enlarged Board of Appeal, which would be a better forum for discussing such a fundamental point of law than the various technical Boards.

To read the whole decision, click here.

T 95/07 - Stuck Right From the Start ?

[…] According to the principles developed in T 644/97, the technical problem arising from a “closest state of the art” disclosure which is irrelevant to the claimed subject-matter in the sense that it does not mention a problem that is at least related to that derivable from the patent specification has a form such that its solution can practically never be obvious, because any attempt by the skilled person to establish a chain of considerations leading in an obvious way to the claimed subject-matter gets stuck at the start. It follows that the respective claimed subject-matter is non-obvious in the light of such art (T 644/97 [2.6.3]). [4.3.9(c)]

This reasoning appears from time to time in the case law (see, for example, T 835/00). I have to admit that I do not find it straightforward. I therefore had a look at T 644/97 where one reads:

[…] E1 is concerned not so much with preparing a particular thermoplastic polycarbonate, as with isolating polycarbonates from their solutions, in particular in chlorine containing solvents. Furthermore, whilst E1 is concerned in general terms with obtaining high quality polycarbonates, having low colouration and a low residual chlorine content, the fact that all the products according to E1 have been prepared by a process which involves the use of phosgene, implies that the resulting products will necessarily contain some chlorine. This is in contrast to the products according to the patent in suit, which have been prepared without the use of phosgene. [2.4.2.2]

Whilst the polycarbonates referred to in E1 have certain features in common with those according to the patent in suit, the teachings of the two disclosures are at cross-purposes, in that the problem addressed is not closely oriented to that solved by the patent in suit. [2.4.2.9]

Following T 686/91, E1 is not an appropriate choice for the “closest state of the art” for the assessment of inventive step. [2.4.2.14]

[But even if one considered s]tarting from such a disclosure as E1, in which the problem is not closely oriented to the claimed subject-matter, an appropriate technical problem would need to reflect such lack of orientation, and consequently to be formulated along the lines of: “The provision of a further polycarbonate with a different spectrum of utility.” [2.6.2]

Quite evidently, the solution of such a problem can practically never be obvious, because the absence, from the statement of problem, of an identifiable convergent aim or goal means that there is no basis for proposing any relevant measure or combination of measures of modification of this “closest state of the art” to achieve such an aim. In other words, any attempt by the skilled person to establish a chain of considerations leading in an obvious way to the claimed subject-matter gets stuck at the start. Nor would the skilled person be led to combine with E1 a prior art disclosure more directly relating to the relevant problem than that of E1, say E6, since the relevance of such a disclosure would not be apparent (T 325/93). [2.6.3]

In summary, the technical problem arising from a “closest state of the art” disclosure which is irrelevant to the claimed subject-matter in the sense that it does not mention a problem that is at least related to that derivable from the patent specification has a form such that its solution can practically never be obvious, because any attempt by the skilled person to establish a chain of considerations leading in an obvious way to the claimed subject-matter gets stuck at the start. It follows that the respective claimed subject-matter is non-obvious in the light of such art. [2.6.4] 

I remain unpersuaded. I believe that this reasoning is too much concerned with the problem stated in the potential closest prior art. The problem-solution approach as I understand it does not really depend on this problem. Otherwise prior art other than patent literature (such as, for example, a product on sale or an object disclosed in a prior use, which do not disclose any problem whatsoever) would never be able to qualify as closest prior art, which is nonsense. In order to know the objective technical problem (which is the only decisive problem within the framework of the problem-solution approach) one has to have determined the closest prior art already. Therefore, I much prefer what is stated in T 606/89 [2] : “Establishing the closest prior art requires that the claimed invention should be compared with the art concerned with a similar use which requires the minimum of structural and functional modifications.” I think that it is legitimate to consider the problem disclosed in the potential prior art – if there is any ! –, but this criterion alone cannot be decisive. T 989/93 [12] is quite balanced : “A document serving as the starting point for evaluating the inventive merits of an invention should relate to the same or a similar technical problem or, at least, to the same or a closely related technical field as the patent considered. A document belonging to a different technical field is much less likely to provide any sound reason why a person skilled in the art would (and not only could or might) have arrived at the subject-matter claimed.”

Irrespective of whether I am right or wrong, it is good to know that this argument has been made repeatedly in the case law. It might be of use in the defence of otherwise doomed patents or applications.

To read the whole decision, click here.

T 95/07 – There is No Withdrawal of Evidence

[The second opponent] submitted in its statement of grounds of appeal with respect to A 54 and the disclosure of comparative example 4 of D1 that the data of D6, i.e. the experimental data of [the first opponent] were more reliable than D11, i.e. the theoretical calculation provided by [the second opponent] and stated that it withdrew D11. [V(c)]

[…] The fact of the matter is that D11 formed part of the proceedings from the outset and forms part of the public file. Whilst a party may choose not to rely on a particular piece of evidence in the file the Board is not aware of any legal mechanism for removing arbitrarily or by simple preference of that party elements of evidence already cited and forming part of the proceedings. On the contrary by analogy with the finding of T 270/94 [2.1], D11 formed part of the legal and factual framework within which the examination of the opposition was to be conducted. Pursuant to A 113(1) each party must be allowed to comment on any evidence legitimately submitted in the proceedings. Allowing one party, even the party having originally submitted that evidence unilaterally and arbitrarily to require such evidence to be excluded from consideration would infringe this right.

In the present case, moreover, for the reasons given the remaining piece of evidence relied upon (D6) leads to the conclusion that the subject-matter of comparative example 4 of D1 does not anticipate the subject-matter of operative claim 1. D11 contains no information which would result in a modification of this conclusion. Hence insofar as the consideration of novelty is concerned, neglecting the evidence provided by D11 would not change the conclusion reached. [4.2.12]

To read the whole decision, click here.

T 95/07 - Always Duly Introduce Guest Artists

[…] A request was made that an accompanying person be allowed to speak at the oral proceedings (OPs).

According to G 4/95, it is required that the request for permission for oral submissions to be made by an accompanying person should state the name and qualifications of the accompanying person and should specify the subject-matter of the proposed oral submissions ([Order 3.(b).(i)]). It is also required that the request be made sufficiently in advance of the OPs so that all opposing parties are able properly to prepare themselves in relation to the proposed oral submissions ([Order 3.(b).(ii)]).

In the present case the attendance of the accompanying person, Ms Saeki was announced more than a month before the OPs. In this letter it was stated that Ms Saeki was “Manager of the IP Department of Asahi Kasei Corporation”. No further details of the qualifications of Ms. Saeki were provided. As regards the subject-matter of the proposed submissions, it was requested that the accompanying persons be permitted “to speak with regard to technical matter in support of submissions made by the undersigned representative”.

Whilst in some cases, for example where the accompanying person is identified as being the inventor, this information might be considered sufficient to establish both the qualifications and - at least in general terms - the subject-matter of the proposed submissions (cf. T 910/06 [5.9.5]), this does not apply when the accompanying person is, as in this case, identified solely as an employee of an opponent or an affiliated company of the opponent which employee further is not identified as performing a technical function associated with the subject-matter of the patent in suit, nor as having had any involvement, even peripherally, in the preparation of the disputed experimental data. As a consequence of this, it would not have been possible in advance of the OPs to understand - even in general terms - with respect to which technical aspects the requested submissions were to be made.

Under these circumstances the Board could only come to the conclusion that the preconditions set out in G 4/95 were not met and as a consequence refuse to authorise Ms Saeki to make oral submissions. [4.2.8]

To read the whole decision, click here.

T 95/07 - Standard of Proof for Implicit Disclosure

As this decision is interesting on several accounts, I will devote more than one post to it.

[…] In the case of arguing a lack of novelty based on a replication of an example of a prior art citation, the case being made is that the subject-matter claimed, even if not anticipated by the explicit literal disclosure of the citation is nevertheless implicitly anticipated to the extent that in carrying out the express literal disclosure and instructions of a prior art document (e.g. an example) subject-matter falling within the terms of the claims of the patent in suit is the inevitable outcome. In deciding what is or is not the inevitable outcome of an express literal disclosure, there can be no space for doubt and hence a much stricter standard of proof than the “balance of probability”, namely “beyond all reasonable doubt” needs to be applied. This means that if there is any reasonable doubt as to what may or may not be the result of carrying out the literal disclosure and instructions of a prior art document, i.e. if there remains a “grey area” then the case of anticipation based on that document must fail (see T 793/93 [2.1]). [4.2.5]

To read the whole decision, click here.

T 972/05 - Unlike Stalin, the EPO Can’t Correct Facts

The contested decision was signed by the opposition division (OD) on 1 March 2005 and was posted on 18 May 2005. However, the decision was sent without being accompanied by the Minutes of taking of evidence. Said Minutes were dispatched with a subsequent letter of the OD dated 24 June 2005, under the cover letter of the first sheet of the interlocutory decision (EPO Form 2327). In a further brief communication to the parties dated 2 August 2005, the OD stated: “The interlocutory decision is dated 24.6.2005.” [1.1]

However, the OD had no power to re-date its decision under R 89 EPC 1973 (R 140 EPC) (see T 124/93 [1.1]). Nor could the OD change the mailing date of the decision once it was correctly notified to the parties, in order to re-start the time limit for filing an appeal according to A 108, first sentence, EPC. The mailing date is a fact which cannot be corrected for example under R 89 EPC 1973. The circumstance that the Minutes of taking of evidence were missing is not of relevance, as both parties were in possession of the decision itself which alone forms the basis for the appeal. [1.2]

According to A 108 EPC, the time limit for filing an appeal is two months after notification of the decision on 18 May 2005. Allowing 10 days for post services, the non-extendable time limit for filing the appeal expired on 28 July 2005. [1.3]

It results from the above considerations that the notice of appeal of appellant I, filed on 25 July 2005, was filed in good time; whereas its statement of grounds of appeal was filed late on 2 November 2005. However, the board accepts that appellant I was misled by the letter of the OD which stated a later date for the decision. Applying the principle of protection of legitimate expectations according to which communications of the EPO can be relied upon, the appeal of appellant I is thus considered admissible (see T 124/93 [1.1]). [1.4]

The opponent’s notice of appeal was filed on 29 August 2005 and the grounds for appeal were filed on 24 October 2005, both dates being after the expiry of the time limit for the appeal on 28 July 2005, triggered by the notification of the decision posted 18 May 2005. Hence both letters were filed too late. Appellant II cannot, in the board’s view, rely on having been confused by the OD’s letter dated 2 August 2005, as this letter was received by them only after expiry of the said time limit for filing the appeal. The appeal of the opponent is therefore not admissible (A 108 EPC). The opponent is thus party to this appeal proceedings as of right, pursuant to A 107 EPC, second sentence, and will in the following be referred to as the respondent. [1.5]

To read the whole decision, click here.

T 314/07 - It Ain’t Necessarily So …

This decision shows that one has to be careful when extrapolating from intermediate products of a process to the final products. Certain features may indeed undergo some change during the execution of the process.

[…] Claim 1 as maintained by the Opposition Division (OD) comprises the substantial amendment requiring that in the claimed absorbent article the surfactant is disposed in at least one of the layers of the polymeric film “other than a top layer of the polymeric film”. This amendment is intended to specify that there is no surfactant in a top layer of the polymeric film in the claimed absorbent material. According to the Respondent this amendment finds a support in the second full paragraph on page 7 of the application as filed. [2.1]

It is established jurisprudence of the Boards of Appeal that an amendment to a claim offends against A 123(2) EPC, if the amended subject-matter is not directly and unambiguously derivable from the application as filed. In the present case, it is not disputed that the passage cited by the Respondent as support for the amendment to claim 1 does not describe the absorbent material per se but the method for preparing the film used in the preparation of the claimed absorbent material. In these circumstances, the question arises whether the amendment of the claim directed to the absorbent material is nevertheless directly and unambiguously derivable from a passage of the application as filed not describing the final absorbent material as such but the preparation of the intermediate film used there for. The particular characteristics of the intermediate film described in the application as filed could be automatically transferred to the final absorbent material only if these characteristics would remain unchanged throughout the process of preparing the absorbent material, in other terms, if the location of the surfactant in the intermediate film is not altered by the process steps leading to the final absorbent material, such as aperturing and bonding the film to the other parts of the article.

However, it is known in the art, for example from D1, that the surfactant initially disposed in an internal core layer of a multilayer film migrates into the outer layer, the rate of migration increasing with increasing temperature. In order to avoid the migration of the surfactant to the outer layer the film has to be stored at room temperature or below. Thus, the location of the surfactant in the intermediate film does not remain unchanged, the surfactant migrating from the core layer into the outer layer already at a temperature around room temperature. Since the film described in the application as filed, is not only handled at room temperature during the preparation of the final absorbent but is even heated for aperturing and bonding it to the other elements of the absorbent article, the surfactant located initially in the internal layer migrates to the outer layer. Therefore, the location of the surfactant in the intermediate film is altered by the process steps leading to the final absorbent material with the consequence that the passage describing in the application as filed that the surfactant is internally compounded is not automatically applicable to the final absorbent material. [2.2]

Therefore, the amendment to claim 1 intended to specify that in the final absorbent article the surfactant is not disposed in a top layer of the polymeric film cannot directly and unambiguously be derived from the passage of the application as filed. The amended claim 1 of the main request does, thus, not fulfil the requirements of A 123(2) EPC. [2.3]

To read the whole decision, click here.

T 217/07 - Boards May Still Apportion Costs

A 104 EPC, an article dealing with costs, has undergone some changes when the EPC was revised. Not all of these changes were purely cosmetic. In particular, A 104(1) does not refer to the Boards of appeal any more : (click to enlarge)

 

Does this mean that the Boards will not be able to order apportionment of costs under the EPC 2000 ? No, says the Board in decision T 217/07 :

A 104(1) of the revised EPC states “Each party to the opposition proceedings shall bear the costs it has incurred, unless the Opposition Division, for reasons of equity, orders, in accordance with the Implementing Regulations, a different apportionment of costs.” Although A 104(1) EPC does not refer to the boards of appeal any more (in contrast to A 104(1) EPC 1973), the boards of appeal still have the power to apportion costs according to A 104(1) EPC. This power stems from A 111(1) EPC. [7.2]

To read the whole decision, click here.

T 1143/06 - A Case for Mentalists ?

The invention relates to a system and method for accessing data files in a computer-based database. […] A problem associated with large computer databases is that it can be extremely difficult to identify hidden patterns in the data. The invention allows each of the data files to be represented visually as an element moving on the display. […] Thus, hidden patterns in the data are easily identified by observing groups of elements moving in a similar way. [1]

[…] The examining division (ED) refused the claim as not involving an inventive step. [3.1]

The invention differs from D1 only in that the speed of movement of respective elements is determined, causing the elements to move relative to one another. The main question is whether the ED’s finding that this feature did not have a technical effect was justified. [3.2]

A non-technical claim feature is a feature which does not interact with the technical features to produce a technical effect. According to the jurisprudence of the Boards of Appeal such a feature cannot establish novelty and inventive step (T 154/04 [15]). Since the present invention is concerned with the visualisation of data files A 52(2)(d) EPC, excluding presentations of information from patentability, is obviously relevant. [3.3]

If the new features of a claim concern the presentation of information itself (rather than its concrete implementation) a patent can only be granted if they also produce a technical effect. If they do not they cannot contribute to an inventive step. [3.4]

The movement of the elements symbolising the data files over the screen is intended to convey information. […] Regarded in isolation this feature must be held to be a “presentation of information” in the sense of A 52(2)(d) EPC. In its claim context the feature can therefore only contribute to an inventive step if it additionally produces a technical effect. [3.5]

[…] The appellant argues that the invention provides a greater amount of information and therefore provides a superior solution to the “objective technical problem to be solved”, namely to permit an “efficient search, retrieval and evaluation of data records stored in a database”. The Board’s view is that the invention does not solve a problem that is directly concerned with the search for and retrieval of information, since the only new feature relates to the movement of displayed elements. The direct effect of the visualisation is the impression it makes on the user. The stated problem is therefore too broad. A more precise formulation would be that the invention solves the problem of presenting information about data files to a person in such a manner that he can easily evaluate it, this person being the user of a system for search and retrieval of data files in a database. This wording demonstrates more clearly that the problem is not a purely technical one. In fact, the same information could theoretically be displayed as natural-text descriptions or tables. A direct technical effect therefore seems to be absent.

The user of the system responds to the displayed information by activating selecting means to select a data file and cause the system to display it. […] The user’s evaluation of the information is a mental act. Like any cognitive process it is at least in part subjective, as the ED has pointed out. Truly technical is thus only the system’s response to the user’s activation of the selection means. However, not only is the system response indirect since it is entirely dependent on the outcome of the mental act on the part of the user, but it is not even new: the system reacts on the selecting means in the same way as in the prior art. It may fetch a different data file than in the prior art, but if it does it is a mere reflection of the insight the user has gained from the mental act. Although this mental act will be influenced by the invention, such influence is not in itself a criterion of technicality.

A technical problem could therefore only be related to the implementation details of the method, as the ED correctly concluded. In claim 1 however the implementation is only implicit. [3.8]

The request must be refused under A 56 EPC 1973. [4]

To read the whole decision, click here.

T 382/07 - True Disclosure Found in the Priority Document

This (Kinkeldey) decision is very interesting on more than one account.

First, the decision deals with a provision of the Paris Convention (PC) that is hardly known at all : the possibility of claiming an exhibition priority (Article 11 PC). Such priorities are not recognized by the EPC, as explained in points 8 to 8.4 of the Reasons. Laurent Teyssèdre has discussed this aspect of the decision on his blog (in French).

But there is even more. Once the exposition priority is lost, document D5 becomes prior art under A 54(3) EPC, due to the date of filing of its priority document, D49.

The Board therefore has to consider the formal entitlement to priority (D49 having been filed by four natural persons, whereas D5 has been filed by only one of them; see point 9 of the Reasons).

Finally, the Board examines substantive entitlement to priority and finds a difference between the disclosures of D49 and D5 :

[…] In addition to the general description, document [D49] comprises eight examples. Example I of document [D49] literally recites, albeit in a different order, the five compositions for veterinary use of examples 1 and 2 of document D5, with the exception that in the composition corresponding to the first composition of Example 2 of document D5 the content of glycerine monostearate 5% according to document [D49], whereas it is 1% according to document D5.

With respect to this difference, in the board’s view the skilled person studying document D5 would recognise that, in contrast to the summed percentages for all the other relevant compositions, the sum of percentages for this one does not amount to 100 and that therefore the composition cannot be meant to read as such. The board considers that for establishing the intended percentages of ingredients and in the absence of indications in the patent document itself, the skilled person would compare the disclosure of the erroneous composition to the disclosure of the corresponding composition in the priority document, because the disclosure of a specific example, if there is a corresponding one, is highly unlikely to change between the priority and the later application. He/she would therefore conclude that the value of 1% should in fact read 5%.

The present board is aware of decision G 11/91 regarding the correction of errors in the disclosure of a patent application pursuant to R 88 EPC 1973. The Enlarged Board held in point 7 of the reasons that priority documents may not be used to establish what a skilled person would actually derive, on the date of filing, from the parts of a European patent application relating to the disclosure.

However, in the present board’s view, this decision is not applicable to the present case which is not related to the question of whether or not the correction of an error complies with the requirements of A 123(2) EPC but rather is concerned with establishing the true disclosure content of a patent application in the case of an obvious error for the purposes of A 54(3) EPC and for determining the validity of the claimed priority. As far as the determination of the disclosure content of a prior art document is concerned it has been held by the boards of appeal in several decisions that for the correction of an obvious error in such a document the skilled person may resort to readily accessible relevant external documents, for example to a corresponding US patent application in the case of an obvious error in a British patent application (T 412/91 [3.5]) or to the original document in the case of an obvious error in an abstract of that document (T 77/87 [4.1.4] and T 1080/99 [4.5-6]).

Therefore, the board concludes that, in effect, the relevant examples in document D5 and document D49a are identical. [10.2]

This decision is really worth reading. To do so, just click here.

T 1898/06 - Claims Are to be Clear in Themselves

Claim 19 of the Main Request read as follows: “A pharmaceutical composition comprising a compound according to claim 1 or the pharmaceutically acceptable derivatives thereof.” [IV(b)]

According to A 84 EPC, the claims shall define the matter for which protection is sought (first sentence) and for this purpose they shall, inter alia, be clear and supported by the description (second sentence). This implies that the claims be clear in themselves when being read with the normal skills, but not including knowledge derived from the description of the patent application. (T 988/02 [3.3.1]).

Therefore, the Appellant’s argument that it was clear from the description of the application what was to be understood as pharmaceutically acceptable derivatives, cannot support clarity of the claims. [2.2]

The expression “or the pharmaceutically acceptable derivatives thereof” adds to the compounds as defined in claim 1 those which are “derived” from said compounds. There is, however, no clear definition to which extent the compounds according to claim 1 may be modified while still being regarded as derivatives. This has the effect that the person skilled in the art cannot decide clearly which compounds are to be covered by the claims and which are not. [2.3]

For this reason, the subject-matter of claim 19 of the Main Request is not clear, contrary to the requirements of A 84 EPC. [2.4]

To read the whole decision, click here.

T 1496/06 - Conditional Withdrawal ? Nope.

The title of this post is misleading insofar as the EPO (and the WIPO, for that matter) does accept withdrawals (of applications) that are conditioned upon non publication. See for example the Guidelines A-VI 1.2 where it is stated that the applicant “may make [the withdrawal] subject to the provisio that the content of the application is not made known to the public.” The present decision deals with another (admittedly rather exotic) situation : the conditional withdrawal of a published application during appeal proceedings following a rejection.

In a fax dated 26 June 2009 the appellant withdrew the application on the condition that any fee was refunded, explicitly setting out that, if no refund was possible, the application was not withdrawn. [IX]

[…] The appellant’s initial request was that the decision be set aside in appeal proceedings and a patent be granted. According to the principle of party disposition this request determines the extent of the appeal proceedings (see G 9/92, [1,3,9]). [2.1]

On the other hand, the appellant’s conditional withdrawal of the application, if legally effective, means that the appellant now requests that “any fee is refunded” with the immediate termination of the appeal proceedings without examination of the appeal, which is the consequence of a withdrawal of the application in appeal proceedings in accordance with established case law. The conditional withdrawal in effect thus aims at an alternative to the examination of the appeal provided for in A 110 EPC and A 111(1) EPC 1973 so that it remains open whether the appellant requests that the board decide on the appeal or not. [2.2]

Consequently the conditional withdrawal of the application aims at extending the appeal to subject-matter which has no basis in the EPC and is contrary to the principle of party disposition. Thus it is inadmissible in the appeal proceedings and does not have any legal effect (see T 9/04). [2.3]

To read the whole decision, click here.

T 1140/06 - A Good Example is the Best Sermon

Although examples according to the claimed invention are not mandatory parts of a patent/patent application disclosing an invention, they are however, in general, construed to illustrate, within the framework of the description, the core section of the claimed invention and to relate to preferred embodiments thereof. In general, they serve the purpose of demonstrating the benefits of the claimed invention, and their results should, apart from few accidental failures, therefore fulfil the requirements of the claims. Hence, examples should, in the Board’s view, provide the person skilled in the art with all the essential details necessary for the verification of their reported results (e.g. by repetition, if necessary), such as starting materials, process features and process conditions.

In other words, the examples should confirm that the description of the patent or patent application in suit provides a coherent, convergent teaching enabling the skilled person to arrive at the goals of the claimed invention, and should thus make an extensive research programme superfluous. [5] 

So be it.

To read the whole decision, click here.

T 1157/06 - Southern German Skills

Several Board of appeal decisions have retained very precise definitions of the skilled person. For instance, T 412/93 [4] has found that in a particular case “the skilled person should be treated as a team of three composed of one PhD researcher with several years experience in the aspect of gene technology or biochemistry under consideration, assisted by two laboratory technicians fully acquainted with the known techniques relevant to that aspect.” In the present decision, the opponent pushed things even farther. Enjoy.

The Opposition Division had rejected the opposition and concluded that the subject-matter of claim 1 of the patent as granted was inventive.

[…] The appellant argued that […] the skilled person, a mechanical engineer from the south-west of Germany, having graduated from a technical college and having several years of professional experience working for a major manufacturer of gears, and whose command of English corresponded to the average knowledge of English of a person having passed final secondary-school examinations (Abitur) twenty years ago, would – due to his limited knowledge of English – have understood the cited passages [of D1] to disclose that the couple of bearings of the planetary gear compensate the forces directed towards the inside. […]

The following questions should be referred to the Enlarged Board of Appeals (EBA) : (1) Does the skilled person have a mother tongue ? If so, what is his mother tongue ? (2) What is the level of knowledge of foreign languages of the skilled person ? […] [VI]

[…] According to A 112(1) EPC a referral to the EBA is admissible only if a referral is required in order to ensure uniform application of the law, or if an important point of law arises. In both cases the Board before which the procedure is pending and for the decision of which the answer to the question to be referred is relevant, has to consider that a decision is required. [4.1]

In the present case, the Board does not consider that a decision of the EBA on the questions submitted by the appellant is required, because the answer to these questions follows unambiguously and directly from the EPC and because the case law uniformly applies the law.

According to A 54(2) EPC 1973, the state of the art comprises everything made available to the public by any means whatsoever before the date of filing. The language of the publication does not matter.

The questions raised by the appellant concern the interpretation of a prior art document and the determination of its content, respectively. The point is what a skilled person can extract from a disclosure.

There is comprehensive and constant case law concerning this point. The criteria of interpretation have been defined unambiguously. The language skills of the skilled person do not form part of the decisive criteria playing a part in the interpretation of documents.

This is because, according to the uniform case law, the skilled person is not a real existing person but a fiction representing the entire technical knowledge (Fachkenntnisse) that has to be considered in the assessment of inventive step and, as a consequence, in the interpretation of the prior art.

Therefore, the subjective language knowledge of the person reading a document cannot play any role. [4.2]

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

T 756/06 - How to Deal with Hybrids

The claims relate to a display apparatus having a mixture of technical aspects, e.g. automatically calculating a second time scale, and non-technical aspects, e.g. presenting schedule information. It is established jurisprudence that such claims are inventions in the sense of A 52(1)(2), but that the non-technical features cannot support the presence of inventive step (A 56). Technical features are generally considered to be those that produce a technical effect. [4]

In practice in such cases, one of two approaches is generally followed.

In the first approach, e.g. apparent from T 931/95, there is an initial analysis of the technical character of the features of the claim and then a consideration of the inventive step of only those features. This approach is typically used for inventions that are essentially business methods running on more or less notoriously known computer hardware.

The second approach, e.g. used in T 641/00 (Comvik), is a more conventional application of the problem and solution approach where the differences with respect to the closest prior art are determined and only those that contribute to the technical character are considered for inventive step. This approach may be more appropriate where the technical part is more substantial and/or relevant prior art exists. It has the advantage that any non-technical feature known from this prior art will not appear as a difference and does not need to be considered in the subsequent steps, thus sparing the step of judging whether it makes a technical contribution. Furthermore, this approach is less abstract since the claimed features can be analysed against concrete prior art. [5]

To read the whole decision, click here.

J 16/08 - Swedish Gymnastics

This decision deals with a legal situation that is more or less obsolete, as it concerns an error of designation. Due to an error in the instructions given to a Japanese attorney, France was designated instead of Sweden. However, the decision is not without interest as it considers the effect of an erroneous publication in the European Patent Register (EPR).

[… There is] no need to go beyond the principles considered in the well-established jurisprudence summarized in J 7/90 and also endorsed in J 6/02. That summary corresponds to the three conditions to be met by a request for correction of a designation posited by the appellant in its statement of grounds of appeal: [the correction of an erroneous designation which requires no payment of a designation fee is allowable if: (a) it complies with the applicant’s initial intention, (b) the request is made without undue delay after the error is discovered, and (c) the request is received in sufficient time to enable publication of a warning together with the EP application. ]. The Board must next consider whether the appellant’s evidence is sufficient to prove the facts relied on. [10]

First, there is the question of how the mistake arose and whether that could be treated as an “excusable oversight”. [… T]he statement clearly describes both the appellant’s original intention (to designate Germany and Sweden) and how, by a simple human error, that original intention was mistakenly implemented (by designation of Germany and France). The mistake appears to be one capable of classifying as an “excusable oversight”. [11]

Second, as regards how and when the mistake was discovered, Mr. Kasuya’s statement is equally straightforward. The mistake was not noticed until, on receiving notification that the fifth annual renewal fee had been paid, Mr. Kasuya happened to check his files and discovered his own earlier error. [12] 13. Thus, of the three conditions which according to the case-law must be satisfied by a request for a change of designation, two appear to be satisfied by the appellant’s account of how the mistake came about and how it was discovered. First, it appears that a mistake was made, that this was an excusable oversight, and that the correction would give effect to the appellant’s original intention. Second, the request was made without undue delay after the error was discovered. This requirement is clearly designed to ensure that, so far as possible, requests for corrections are made before publication […].

Thus whether or not there has been delay must reflect the facts of the particular case. In the present case there is the highly unusual fact that, due apparently to an oversight on the part of the EPO, all publications of the application or of its data showed and still show today all contracting states (CS) as designated. The consequence of this is that a change in the published information will not, as regards the correction sought, show the published information to have been misleading (see point 14 below). Thus, while the request for correction could probably have been filed more speedily than in fact it was, it cannot be said it was done with undue delay. [13] The question which then arises is whether the remaining condition - the “time limitation” condition - has been met or, as the appellant submits, whether it need not be met in this case. The requirement that a request for correction must in the public interest be made early enough to enable publication of a warning together with the EP application is both reasonable and necessary. It balances the protection of, on the one hand, applicants who wish to correct genuine mistakes and, on the other hand, third parties who rely on published information.

In the present case it appears that, regardless of the applicant’s wishes as expressed in section 10 of Form 1200 to confine the designations to two CS, the application when published showed all possible CS as designated and the EPR still shows that today. Thus, third parties will not be prejudiced by the correction since up to the date of this decision no publication has ever indicated that the territorial scope of the claimed invention was limited to two CS. The fact that after the correction one of those states will be different from one originally but erroneously indicated by the appellant in box 10.2 of Form 1200 will therefore make no difference. Accordingly, in the unusual circumstances of this case, the third condition of the case law need not - indeed cannot - apply. [14] The appeal is therefore to be allowed with the result that the designation of France will be replaced with the designation of Sweden. [15]

I think the decision has to be approved. The Board could have mentioned the fact that the original (“erroneous”) form was also in the EPR file. To this extent it appears incorrect to say that “no publication has ever indicated that the territorial scope of the claimed invention was limited to two CS.” However, the conclusion would have had to be the same, as the reference to all the CS being designated would have created at least some doubt in third parties consulting the whole EPR file.

This decision is also discussed in detail here (in French).

To read the whole decision, click here.

T 254/06 - Forget About Best Mode

The examining division (ED) refused the application on the grounds that claim 1 was not supported by the description, A 84. [II]

Present claim 1 specifies that “the device is adapted to generate L addresses, which are smaller in number than N = Ng x 2^m virtual addresses for reading data from said interleaver memory in which L data bits are stored". The board notes that in the contested decision the ED reasoned that the definition “L addresses, which are smaller in number than N = Ng × 2^m virtual addresses” was meaningless because for any value of L, infinitely many combinations of m and Ng could be found, for which L is smaller than Ng × 2^m. According to the ED, claim 1 did not imply anything about optimal choices of m and Ng. […]

The device as set out in the description is able to generate L addresses, which are smaller in number than N = Ng x 2^m virtual addresses. It may indeed be true that claim 1 does not imply anything about optimal choices of m and Ng, but it is not a requirement of the EPC, and in particular not a requirement of A 84, that the claims should specify the optimum way of carrying out the invention. Hence, the board sees no reason to object to the claimed feature that “the device is adapted to generate L addresses, which are smaller in number than N = Ng x 2^m virtual addresses for reading data from said interleaver memory in which L data bits are stored”. [3.1] 

Notwithstanding this criticism of the impugned decision, the Board finally rejected the appeal because it found the claims to be insufficiently disclosed.

To read the whole decision, click here.

T 1068/06 - Opposition Filed by a Company Without Legal Personality

The proprietor of the patent considered the appeal of Schott AG inadmissible because the opposition filed at that time by Schott Glas was inadmissible. According to the proprietor, Schott Glas was not a legal person but a legally dependent company of the Carl-Zeiss-Foundation ; as a consequence, it could not file an opposition in its own name. [VII]

Until its transformation into a joint-stock company, which has taken place in the meantime, Schott Glas, having its office in Mainz, was a foundation company of the Carl-Zeiss-Foundation without legal personality. It was registered as “Schott Glaswerke” in the Commercial Registry. The registered business proprietor was the Carl-Zeiss-Foundation in Heidenheim. According to article 17, first paragraph, of the German Commercial Code (HGB), the company (here : Schott Glaswerke or Schott Glas) of a merchant (here : Carl-Zeiss-Foundation) is the name under which the merchant conducts his business and signs documents. According to paragraph 2 of the same provision, the merchant can sue and be sued under the name of his company. According to German law, the proprietor of the company thus participates under his business name, i.e. the company, in legal and business relations. Therefore the Board has no doubt that the company Schott Glas which belongs to the Carl-Zeiss-Foundation was able to file an opposition against a European patent under this name. [1.1]

I find this reasoning noteworthy in so far as national law is used to establish that Carl Zeiss, who could (should ?) have filed the opposition under its own name was allowed to file an opposition under the name of one its daughter companies without legal personality.

A second aspect concerns the transfer of the opposition to Schott Glas AG. I would have expected the Board to have a closer look at the transfer of business assets from Schott Glas to Schott AG, but it is likely that this change of legal status of Schott was in line with the requirements of EPC case law concerning transfer of opponent status.

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

T 1439/05 - Boards Kill by Numbers

In its communication under R 51(4) EPC 1973, the Examining Division (ED) stated that it had the intention to grant a patent on the basis of the amended auxiliary request VI. The ED also stated its reasons for not being able to grant the main request and the auxiliary requests I, II, III, and V. Moreover, the ED stated for the first time that the auxiliary request IV, which it had declared allowable after clarification, was not pursued by the representative of the applicant but was submitted in revised form as auxiliary request VI. Following the communication under R 51(4), the representative denied approval of the text intended for grant and requested to grant a patent on the basis of the amended main request. [6.2]

According to A 113(2) EPC 1973, the EPO has to stick to the text submitted to it, or agreed, by the applicant (“principle of request” ; Antragsprinzip). If there are several requests in the form of a main request and auxiliary requests ordered according to their rank, then the ED is bound by the order of the requests in its decision (T 169/96; T 540/02).

In the present case the additional statement of the ED in its communication under R 51(4) and the corresponding statement in its decision violate the principle that the request is binding (Prinzip der Antragsbindung). In order to avoid misunderstandings, the ED would have had to clarify the situation of the requests (Antragslage) before announcing its decision at the end of the oral proceedings (OPs). However, the minutes of the OPs do not indicate that such a clarification took place. A clarification was needed all the more as the situation of the requests had become confusing because of the great quantity of filed and amended requests. As the minutes of the OPs do not contain a list of all requests on which the decision was based, the statement of the applicant that it had not withdrawn request IV is credible in view of the numbering of the requests. If it had had the intention to replace auxiliary request IV it would hardly have filed the request as additional auxiliary request VI. [6.5]

The principle that the EPO is bound by the text submitted or agreed by the applicant is a procedural principle of so fundamental importance that each violation of the principle, even if it is due to an erroneous interpretation of a request, must be considered to be a substantial procedural violation (T 647/93 ; J 19/84). [6.7]

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

J 4/09 - How to Handle Reproductive Difficulties

This decision deals with the rejection of an application by the Receiving Section (RS). The RS had sent a communication concerning a deficiency of the drawings (R 57 (i) EPC) because it considered that the drawings (Figs. 1 and 2) were not suitable for reproduction. As the applicant did not respond within the time limit, the application was rejected.

[…] The RS considered as a deficiency that the application did not fulfil the requirements of the EPC because the document, as far as Figs. 1 and 2 were concerned, was not suitable for electronic reproduction. Apparently this refers to R 49(2) EPC. This provision stipulates that the documents making up the application shall be presented so as to allow electronic and direct reproduction. The form used for the communication and the formal decision that is based on it leave open why the RS is of the opinion that Figs. 1 and 2 have been presented in a manner that does not allow electronic and direct reproduction.

To begin with, the fact that the figures have been incorporated into the electronic file of the EPO and that an obvious difference with respect to the filed version cannot be ascertained militates against this view. Deficiencies which could, for instance, prevent an unambiguous scanning result have not been concretely identified by the RS.

It is of course commendable and important that the RS strive towards eliminating ambiguities of the disclosure in the version that is to be published by insisting upon the filing of drawings in suitable form, within the framework that R 46 and R 49, paragraphs 1 to 9 and 12, EPC assign to it (moreover taking into account administrative rules such as the Guidelines A-X).

A possible course of action is to repeat the scan procedure in order to exclude technical errors of the EPO and, if this is unsuccessful, to request drawings in a form which improves the recognisability of the original details, the objective being to improve the technical procedure and not the content of the application.

The question as to what information can be gathered from the drawings is not part of the formal examination. Rather, the applicant, by selecting and drafting (Fassung) of the application documents, determines the extent of the disclosure. The informative value (Aussagekraft) of the filed drawings therefore is part of the field of responsibility of the applicant. There cannot be an examination beyond the questions foreseen for the RS in R 46 and R 49, paragraphs 1 to 9 and 12, EPC. In particular, improved drawings may not lead to disclosures that are not comprised in the original version and the applicant may not be obliged to renounce a disclosure that he believes to be possible only in this way, by imposing an amendment of the drawings. As far as amendments in the examination proceedings are concerned, the general rules also apply to drawings. [2] 

The Board then comes to the conclusion that the RS has committed a substantial procedural violation (insufficient reasoning). Nevertheless, reimbursement of the appeal fee is not ordered because the applicant had not filed a response to the RS but had pointed out the apparent contradiction between the allegation of the RS (that the figures were unsuitable for reproduction) and the fact that the figures were reproduced only in its statement of grounds for appeal.

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

T 869/06 - Business Trips May Justify Postponement of Oral Proceedings

According to A 15(2) of the Rules of Procedure of the Boards of Appeal, a change of date for oral proceedings (OPs) “may exceptionally be allowed in the Board’s discretion”. Examples of circumstances that may be taken into account when exercising this discretion are given in the Notice of the Vice-President of DG3 dated 16 July 2007 concerning OPs before the Boards of Appeal.

The board accepts on the basis of the representative’s statement and the filed supporting evidence that he had arranged and booked the business trip on the date set for OPs before the notification of the summons and that a business trip arranged in advance of the notification of the summons is a serious substantive reason to request the change of the date for OPs. However, the request does not in fact correspond to any of the circumstances given in the Vice-President’s Notice as the present representative could have been substituted by another representative of the same firm.

The board notes that, in accordance with established case law (see e.g. T 1102/03 and T 1053/06), when deciding on a request for postponement of OPs, the discretion should be exercised considering the procedural economy, an optimised use of resources and capacities and the interest of the public.

In the board’s view, in such a case as this only an alternative date within a period of about two months from the date of the request is justifiable in view of the balance of interests of the parties and the public. The period of about two months arises from the fact that, except for when the parties consent, new summons have to be issued at least two months in advance of a hearing, so that dates within the two-month period from the date of the request could not be used for other cases. [2] 

Strange enough, the Board notes that the requirements of a postponement are not fulfilled (in particular because the attorney could have been replaced by a colleague from his firm) but then agrees to postpone. 

It is interesting to compare this with the findings of T 1080/99 [2.4] : “Valid grounds for a postponement concern an inability to attend OPs due to personal circumstances, such as serious illness, marriage or a death in the family, as well as holidays which have already been firmly booked, as well as an inability to take part in OPs because of a summons to other legal hearings notified to the party before the summons by the Board and also the performance of obligatory civic duties. All these reasons arise due to circumstances beyond the control of the party. A series of business engagements is not a valid ground, nor is excessive work pressure.” 

One could have argued that a business trip is a series of business engagements, but in the end it would be unfair to accept to postpone OPs because of firmly booked holidays but to refuse to postpone in case of a firmly booked business trip.

I should add that this decision also has an interesting statement on inventive step and the benefit of doubt :

The appellant argued that, although it admitted that D2 implicitly disclosed the use of advertising selection data, none of the documents on file disclosed that advertising selection data may be downloaded. In the benefit of doubt it should be assumed that it was not obvious to download advertising selection data.

The board is not convinced by this argument since the established case law of the boards of appeal does not refer to the benefit of doubt with respect to the assessment of inventive step. The present board notes that when assessing inventive step it has to be evaluated whether the skilled person would arrive to the claimed solution starting from the explicit and implicit disclosure of the prior art documents making use of the general common knowledge. [3.2]

To read the whole decision, click here.

J 6/08 - Amazing Grace

One of the best French experts on EPC matters smilingly told us students: “When you’re lost, file an appeal. If you do not know what could possibly save you, the Boards might know !” The present decision illustrates this sentence of wisdom.

What is interesting here is not so much the particularities of the legal situation concerning missing drawings – as it has changed under the EPC 2000 – but the way the Board handles things.

The applicant had filed its application without the drawings. It filed the missing drawings one week later. When receiving an invitation by the EPO to request a new filing date, the applicant did not react – as it should have under the EPC 1973.

Here is a timeline resuming the essential moments of the proceedings (click to enlarge).

[…] The forms used for the notifications of loss of rights (as here the notification dated 13/6/05) contain both a reference to a request for a decision under R 69(2) EPC 1973 and a reference to re-establishment. However, these remedies have very different and to some extent, contradictory requirements. A request under R 69(2) can only succeed if the notification of loss of rights has been wrongfully sent, e.g. when the applicant has carried out the allegedly omitted action. If the applicant has not done so, only a request for re-establishment can be successful. It follows that an interpretation of the meaning of the response of the applicant to a notification of loss of rights may be needed in order to establish whether the request is to be understood as a request for a decision under R 69(2) or as a request for re-establishment. [6.2]

In the present case, a request for a decision under R 69(2) would have been reasonable and appropriate if the applicant had in fact made a request for a new date of filing and if the EPO for whatever reason had found this request not to have been made. No such request has been made before the notification dated 13/6/05. However, a request for re-establishment, to which there is also a reference under the heading “information on legal remedies” (Rechtsmittelbelehrung), would be an appropriate legal remedy if the applicant – as here – had not made a request for a new date of filing but completed this omitted act within the time limit under A 122(2), first sentence. This is what the applicant has done in its letter dated 20/6/05. […] The applicant has confirmed in the oral proceedings that its letter dated 20/6/05 also intended to request re-establishment. [6.3]

The appellant has also given reasons which determined the erroneous missing of the time limit. […] The appellant refers to the proceedings concerning another EP application where it proceeded in the very same way. The EPO had fixed the date of filing to the later date of its own motion although it had also sent a communication concerning late filed drawings. [6.4]

When looking for an interpretation of this request oriented towards the objective intention and taking into account the procedural situation, the Office could also have interpreted the letter dated 20/6/05, which not only completed the omitted act but also gave reasons for missing the time limit, as a request for re-establishment into the time limit under R 43(1) EPC 1973 instead of a request for a decision under R 69(2) EPC 1973. And not only could it have done so, but it would have had to do so. The request should at least have triggered the Office to inquire what the real intention of the appellant was. [6.5]

[…] According to A 122(3), second sentence, EPC 1973, a request for re-establishment shall not be deemed to be filed until after the fee for re-establishment of rights has been paid. As the request for re-establishment is only admissible within the year immediately following the expiry of the unobserved time limit, the payment of the fee also has to be done within this time limit. [9]

The appellant has paid the fee for re-establishment by handing over a debit order during the oral proceedings on 10/2/09 after having been informed that the Board was inclined to interpret its letter to be a request for re-establishment. […] Therefore, the payment of the fee for re-establishment has taken place more than three and a half years after the expiration of the time limit under A 122(2), third sentence, EPC 1973. A 122(3), second sentence, EPC 1973, this would entail the fiction of the request being deemed not to have been made. [9.1]

According to the case law of the Boards of appeal, the legal fiction of A 122(3), second sentence, is an automatic and necessary consequence of the non payment of the fee for late payment of the fee for re-establishment, without there being any discretion for the Board or any possibility to take into account reasons for the belated payment. [9.2]

However, the Board, taking into account the particular circumstances of the case and considering the sense and purpose of the one-year time limit under A 122(2), third sentence, considers that the fact that only the fee for re-establishment has not been paid within this time limit is not legally sufficient to refuse re-establishment.

The Office would have had to made inquiries concerning the real intention of the appellant behind its letter dated 20/6/05. By not doing so, it has violated its duty of clarification (Aufklärungspflicht). [10]

The Board then discusses decisions J 15/92 (where re-establishment was granted on the basis of the principle of good faith), J 34/92, J 6/90, and J 6/98 (where re-establishment was refused on the basis of legal security). As to the latter decisions, the Board adds :

The said decisions concern cases where the applicant did not manifest any intention whatsoever to overcome the loss of rights or to pursue the application, within the one-year time limit. In such situations the Boards have given priority to the legal security of third parties. However, the present situation is not comparable, so that re-establishment is not excluded. [11]

Considering the particular circumstances, i.e. the close temporal connection of the application under consideration and the proceedings concerning [a parallel] application [by the same applicant], the facts of the procedural situation being oriented in the same way (gleichgelagert), and taking into consideration the procedural errors which the EPO made in this parallel application [NB : the EPO had rectified the date of filing of its own motion, in violation of R 43 EPC 1973], one may consider that the appellant has made an excusable legal error concerning the necessity to make a separate request for re-dating the application. [17]

The Board thus grants re-establishment and remits the case to the Examining Division.

To sum up, the Board has interpreted a letter of the applicant in which it required the Receiving Section to set aside a finding under R 69(1) as an implicit request for re-establishment. Moreover, it has accepted a payment of the corresponding fee more than three years after the expiration of the time limit, the payment having been made after the Board informed the appellant of its interpretation of the request.

I cannot help but find such overwhelming judicial benevolence ... amazing.

Seriously, one sometimes wonders whether the Boards remember that third parties and the public in general also have legitimate expectations.

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

Seasons in the Life of DG3

A week ago, I have mentioned the findings of a colleague who had a look at the dates of 2200+ decisions of the Boards of Appeal. Today’s weekend special concerns another aspect of these dates : what is the seasonality of the decisions ? Here is the answer:

I have to say that I was quite surprised to see how evenly the decisions are distributed over the year. There is a significant reduction of the Board activity in August, but there is still quite some activity left. A member of the Boards explained that in several Nordic countries, people avoid working at the end of June and in July (when days are long) but are willing to come to Munich in August to attend oral proceedings.

I am not sure whether the comparison is meaningful, but here is what is found for the fourth chamber of the Paris Court of appeals, which is most renowned French court dealing with IP litigation. The statistics are based on a lower number of decisions (about 320 patent cases, taken over the same period of time as for the Boards of appeal: 1979-2009) and, therefore, less precise.

It appears that the distribution is much less smooth than for the Boards of appeal of the EPO. One may also note that there is very little activity in July and August. This is above all due to the fact that there are six weeks of judicial holidays in France whereas the Boards of appeal do not have such holidays.

T 857/06 - Assistants May Deliberate With the Boards

According to A 19(1), 2nd sentence, of the Rules of Procedure of the Boards of Appeal (RPBA), only members of the board may participate in the deliberations; the chairman may, however, authorise other officers to attend. [3]

The chairman’s discretion to authorise persons other than the members of the board to attend the deliberations is thus limited in an important manner: only officers of the EPO qualify as possible beneficiaries of the discretion. One of the reasons for this limitation appears to be that Article 20(1) of the Service Regulations for permanent employees of the EPO and Article 6(1) of the Conditions of employment for contract staff at the EPO impose a duty of confidentiality on officers of the EPO. They have to exercise the greatest discretion with regard to all facts and information coming to their knowledge in the course of or in connection with the performance of their duties, and they may not in any manner whatsoever use or disclose to any unauthorised person any document or information not already made public. In view of this general duty of officers of the EPO, the limitation of the chairman’s discretion to allow persons other than the members of the board to attend the deliberations guarantees compliance with the principle that deliberations are to be secret (A 19(1), 3rd sentence, RPBA). [3.1]

Since the assistant to the board is an officer of the EPO, the wording of A 19(1), 2nd sentence, RPBA ostensibly provides an adequate legal basis for allowing him or her to attend the deliberations. Nevertheless, it may be argued that, in view of the different terms used in A 19(1), second sentence, RBPA (“participate” and “attend”), a difference should be made between passive attendance of and active participation in the deliberations, and that the active participation of an assistant or of any person other than the members of the board should not be allowed. However, such an interpretation of A 19(1), 2nd sentence, RPBA is not compelling since the legislator may have used the term “attend” not in contradistinction to the term “participate”, but simply as a broader term encompassing it, thus giving the chairman the power to authorise the attending of EPO officers in different forms, i.e. not only as silent observers, but also as actively assisting the board during deliberations by asking questions and expressing thoughts. Since the secrecy of the deliberations prevents the parties or the public from knowing the course of the deliberations, a distinction between allowable passive attendance and unallowable active participation would appear to be rather questionable since it is not only necessary that justice is done but also that it is seen to be done (“doctrine of appearances”). Thus, if, for the sake of argument, it were procedurally improper to allow the active participation of any person other than the members of the board of appeal in the deliberations, this would also be a strong argument against allowing their passive attendance. [3.2]

[…] It emerges from the review [of positions taken in the jurisdiction of the Contracting States] that, notwithstanding a certain bandwidth of positions not uncommon in comparative legal analysis, the active involvement of assistants in preparing the ground for judicial decisions appears to be widely accepted. Furthermore, the rule that only the competent judges should be present during the deliberations is not generally adhered to without exceptions. In some jurisdictions (e.g. Germany), statutory provisions even explicitly allow the attendance of judicial assistants. [4.6]

The primary objective of a court should be to produce the best and most informed decisions. If, in order to reach this objective, the court considers it helpful to allow the attendance of an assistant in the court deliberations, it is appropriate to do so, within the limits of the relevant statutory provisions applicable in its jurisdiction. Notwithstanding the close collaboration of a board’s assistant with the members of the board, there is no delegation of responsibility in respect of genuine judicial activity. With or without the attendance of an assistant, the board members always retain the decision-making prerogative expressed in the act of voting, and there can be no reasonable doubt about who is in charge. [5]

The board concludes that discretion under A 19(1), 2nd sentence, RPBA is properly exercised if the board’s assistant is allowed to attend and to take part in the deliberations.[6]

Certainly not a must-know decision but thoroughly reasoned (bearing Mrs. Kinkeldey’s signature). I find the outcome surprising as I would have come to the opposite conclusion by taking Article 19(1) RPBA at what I believe to be its face value. Anyway, it is interesting to know that there may be more people deliberating on your case than you would have expected.

To read the whole decision, click here.

T 463/06 - A Board May Oblige the OD to Consider a Late-filed Ground It Had Not Admitted

[…] It was within the discretionary power of the opposition division (OD) to decide whether or not to admit A 83 into the opposition procedure. The OD did not admit insufficiency of disclosure as a late-filed ground for opposition because it considered that it was not prima facie relevant. The board has the power to examine the correctness of the conclusion not to admit said ground for opposition.

G 10/91 states in point 2 of the opinion: “In principle, the OD shall examine only such grounds for opposition which have been properly submitted and substantiated in accordance with A 99(1) in conjunction with R 55(c). Exceptionally, the OD may in application of A 114(1) consider other grounds for opposition which, prima facie, in whole or in part would seem to prejudice the maintenance of the European patent."

In the present case the opponent first raised the objection re lack of sufficiency of disclosure as a response to the patentee’s observations. This late-filing was justified as a direct response to the patentee’s observations and additional technical data [concerning] a contraceptive patch for which the arguments relating to the functions linked to a high and continuous drug flux through the skin played suddenly an essential role for the maintenance of the patent.

The OD considered at the oral proceedings (OPs) that the arguments of lack of sufficiency were not “prima facie” relevant for the proceedings. However, in view of the independent claims’ wording (i.e. owing to the presence of functional features in those claims), and in consideration of the arguments developed by the parties in writing during the opposition proceedings, it was essential to investigate whether the conditions set out in A 83 were met, before A 56 could properly be assessed. Therefore, the OD should have considered the discussion re sufficiency of disclosure to be “prima facie” relevant.

Since the review of the first-instance decision as to its merits is one of the main duties of the board, the discussion about A 83 forms part of the framework of the present appeal. Moreover, for the reasons expressed above, A 83 is not a fresh ground for opposition introduced for the first time in the appeal procedure. In fact, A 83 was in the opposition proceedings and was an essential part thereof. Moreover, the opponent did not withdraw its objections re A 83 at any time during the opposition written proceedings or at the OPs before the OD. Furthermore, in the appeal proceedings the respondent developed its arguments in full in its reply to the grounds of appeal. Correspondingly, there is a fundamentally different situation from that depicted in T 520/01, where the ground for opposition (insufficiency) was not maintained in the opposition OPs by the only party which had relied on the ground and the OD did not deal with the ground in its decision. As regards the appellant’s request for referral, the question addresses whether or not a board of appeal has the discretionary power to remit a case to the first instance for discussion of a late-filed ground of opposition. The board is convinced that it has the power to remit a case ex officio for further prosecution (A 111(1)) if it considers it appropriate for well-founded reasons. Apart from that, the board is not aware of any contradictory case law in this respect and hence does not consider that a referral is required in order to ensure uniform application of the law. [1.4]

This is similar to T 986/93 where the Board found that it was not barred from considering a belatedly submitted ground of opposition which had been disregarded by the OD pursuant to A 114(2) if the Board was of the opinion that the OD exercised its discretion in this respect wrongly. Here the Board goes even farther by remitting the case so as to oblige the OD to consider the ground.

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