T 1684/06 – Res judicata Is Indeed A Narrow Thing

The present decision deals with an appeal following the revocation of the patent by the Opposition Division. The patentee pointed out that inventive step had already been confirmed by decision T 891/98 and therefore had to be considered to be res judicata.

[…] Although the subject-matter of claim 1 of the contested patent is identical with the one that the board held as involving an inventive step in T 891/98, the documents and arguments on which the parties relied upon in opposition are different from those on which T 891/98 was based. The factual situation in opposition proceedings was thus different from that of the ex parte proceedings, and so the res judicata principle does not apply in the present appeal case.

In any case, a former decision of a board on an appeal from an examining division has no binding effect in subsequent opposition proceedings or an appeal therefrom (T 167/93 [2.5-2.7 and 2.11.3]), because the parties are not the same. [1] 

The second paragraph is not a surprise; it only restates the established case law of the EPO according to which a decision of a Board of appeal following an appeal against a decision of the Examining Division cannot be considered res judicata in subsequent opposition appeal proceedings. 

What is more intriguing here is the first paragraph cited above. The Board appears to consider that even if there had been a first decision on inventive step (e.g. in a first decision of the Board), it would not be res judicata in favour of inventive step if the documents and arguments used subsequently  (e.g. in a second appeal during the same opposition proceedings) in order to establish a lack of inventive step were not the same. If this approach is followed by the Boards, it leaves almost no space for res judicata altogether.

To read the whole decision, click here.

J 10/08 – A Successful Retraction

This case concerns an application that was withdrawn by letter dated 31 July 2007, received by the EPO on 6 August, 2007. The withdrawal was encoded on 10 August 2007. On the same day, the EPO received a fax from the representative stating: “With reference to my letter dated 31st July 2007, if that letter has not been received at the EPO, please ignore the request to withdraw the EP application … as it was sent in error.” Later on, the representative requested a correction under R 88 EPC 1973. The appeal was filed after the refusal of the EPO to revoke the withdrawal under R 139 (former R 88).

The appellant admits that the Receiving Section was right to interpret the request for withdrawal of its application as unconditional and reacted correctly by entering this withdrawal in the European Patent Register (EPR) but is of the opinion, that this entry could be deleted, because the declaration was made in error. [1]

The matter to be dealt with is the request of the appellant to retract this withdrawal under R 139 because it was, according to the appellant, made erroneously. This Rule allows correction of errors in documents filed with the EPO, these errors being defined as linguistic errors, errors of transcription and mistakes. [2]

In the case under consideration the document filed with the EPO did not show any kind of such an error. The error was not of a factual kind but of a mental one. Therefore it has to be examined, whether the correction of such an error can also be subsumed under R 139. [3]

The Boards of Appeal have dealt with this question in a great number of decisions. One of those decisions on the question of a possible retraction of a procedural declaration is J 10/87 with reference to earlier decisions. In this decision the Board developed the preconditions under which a correction of a procedural declaration may be allowed, namely that the public had not been officially notified of the withdrawal by the EPO, that the erroneous withdrawal was due to an excusable oversight, that the requested correction would not delay the proceedings substantially and that the interests of third parties who might have taken note of the withdrawal by inspection of the file were adequately protected. Under point 8 of the reasons of that decision the Board already stated that the cited case law was sound, because the public interest must rank higher than the interest of a patent applicant wanting his erroneous statement already notified to the public to be ignored. In these cases, legal certainty had to prevail. [4]

These considerations have been confirmed by several other decisions during the following years up to the present (e.g. J 4/97, J 12/03, J 25/03, J 14/04, J 7/06, J 8/06). From all these decisions it is clear that a withdrawal of a European patent application can only be retracted as long as the public has not been officially informed about the withdrawal. [5]

The Board can accept that it was not the intention of the appellant in the present case to withdraw the application but that this was due to a misunderstanding between the various representatives of the appellant dealing with the case. There would also be no particular delay of the proceedings if such a correction would be allowed. [6]

[…] The particularity of the present case might be seen in the fact that the letter, containing the request for “ignoring” (i.e. implicitly retracting) the former letter containing the withdrawal of the European patent application was considered by the Receiving Section as having arrived at the Office on the day of the official publication of the withdrawal. [8]

With respect to the importance of the exact dates which are decisive for the allowability or non-allowability of the retraction the Board has requested an investigation concerning the entry of the withdrawal into the EPR and its public availability. The result can be summarised as follows: The letter of withdrawal dated 31 July 2007 was received by the Office on 6 August 2007. On 8 August 2007 this letter was dealt with by an EPO official and encoded on 10 August 2007 as “legal status”. The procedure of encoding is not to be understood as synonymous with the valid public access to the corresponding data in the EPR. There are two further steps necessary (adding the data to different internal databases) which generally takes 1 to 3 days. As in the present case the encoding took place on a Friday (10 August 2007), it cannot be established by the EPO that the information was made available to the public, i.e. that the public was officially notified of the withdrawal before Monday, 13 August 2007. [9]

The letter dated 10 August 2007, containing the request for retraction of the withdrawal was received by the EPO by fax on the same day. [10]

From the above it follows that the letter containing the request for retraction of the withdrawal was received before the date on which it can be established that the public was officially informed about the withdrawal. [11]

In line with decision J 25/03 it has also to be considered if the public, even after file inspection would have had reason to suspect, that the withdrawal could be erroneous and later retracted or not. In the course of the investigations made it turned out that the content of the letter dated 10 August 2007 was also accessible via the Register Plus facilities by inspection of the file documents on 13 August 2007. Consequently the public would have had the information about the withdrawal and the request for its retraction at the same time and would therefore have been sufficiently warned that there possibly was something wrong with it. [12]

Under these circumstances the Board is satisfied that the public would not have been misinformed or misled by the information published in the EPR. [13]

The Board therefore concludes that the withdrawal of the application may be retracted in the present case by correction under R 139. [14] 

Just one minor remark: From the point of view of third parties, there is not much to be said against allowing the retraction as it arrived in time and nobody was misled. This being said, it could be argued that R 139 is not an appropriate remedy as the request for withdrawal might not qualify as an error. It was indeed the true intention of the professional representative to withdraw the application. (In the present case the error was made by the U.S. attorney of the applicant who inadvertently mixed up two distinct applications.) However, J 8/80 [4] stated that “for the purposes of R 88 a mistake may be said to exist in a document filed with the EPO if the document does not express the true intention of the person on whose behalf it was filed” (i.e. the applicant). (see also J 6/91 [2.2]) So what counts is not the true intention of the professional representative but the true intention of the applicant.

To read the whole decision, click here.

T 1208/06 – Role Of The Inventor In Oral Proceedings

Oral submissions by persons accompanying the patentee or its representative are possible but subjected to the strict requirements laid down by decision G 4/95. In T 621/98 [2], it was held that the patent proprietor is a party to the proceedings and as such is not to be treated as an accompanying person. G 4/95 did not apply because it distinguished the parties from accompanying persons. Therefore, the patent proprietor, even if professionally represented, does not have to announce in advance his intention to make submissions during OPs. The present decision shows that this reasoning is not applicable to inventors who are not proprietors of the patent at issue.

[…] According to the appellant, the inventor, Mr Irnich, is to be considered both as a party to the proceedings and as an authorised representative before the EPA. Therefore, the Opposition Division (OD) would have had to hear the technical explanations of Mr Irnich and should not have considered him to be an unannounced accompanying person. [2]

The Board points out that these two qualities are irreconcilable. Pursuant to A 99(3), opponents are parties to the opposition proceedings as well as the proprietor of the patent. This limitative enumeration does not comprise the inventor. As a consequence, the inventor is not a party to the proceedings. The reason for this fact is that it is incumbent on the proprietor of the patent to defend its patent either itself or via a professional representative. If – as in decision T 621/98 cited by the appellant – the proprietor of the patent is the same person as the inventor (see T 621/98 [1-2]), then he is a party to the proceedings and has the right to give his view on different issues. By contrast, in the present case the inventor, Mr Irnich, is not the same person as the proprietor of the patent, i.e. “Z&J Technologies GmbH”. Therefore the situation underlying T 621/98 does not apply to the present case. [2.1]

According to the documents on file, the representative of the patent proprietor had not announced Mr Irnich as accompanying person for the oral proceedings (OPs) before the OD, nor had Mr Irnich been identified as authorised representative, by filing a power of attorney (Prokura), before or during the OPs. Contrary to the opinion of the patent proprietor, the obligation of the EPO to examine of its own motion (Amtsermittlungsgrundsatz) does not include the obligation to find out whether or not an accompanying person, e.g. a proxy of a company, is authorised to represent a party. Rather it is incumbent on the party to take the initiative to inform the OD or the Board on such circumstances before the OPs, by submitting such a power of attorney. This had not been done in the present case for Mr. Irnich. Moreover, it appears from the minutes that the opponent had objected to the proprietor's request to hear technical submissions from the inventor. [2.2]

In these circumstances, and applying the criteria of G 4/95, the OD has acted correctly by categorising the inventor as an “accompanying person” and not as a party to the proceedings within the meaning of A 99(3) and by rejecting the proprietor's request. The allegation of the appellant that the right to be heard pursuant A 113(2) had been violated by the OD is not justified. [2.2] 

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

T 570/07 – How to Respond to Overkill

In this case the application was refused on several grounds: lack of clarity, inadmissible extension, and lack of inventive step. The applicant filed an appeal. The notice of appeal only dealt with the ‘main objection’ (inventive step) and declared that thereby the clarification problems and the A 123 problem were resolved.

[…] The appeal complies with A 106 and 107 and also with A 108, first and second sentence, and R 64 EPC 1973. Its admissibility therefore depends solely on whether the appellant’s statement of grounds of appeal is a statement setting out the grounds of appeal within the meaning of A 108, third sentence, EPC 1973. [2.2]

It is established case law that the grounds of appeal must specify the legal or factual reasons why the impugned decision should be set aside. The arguments must be clearly and concisely presented to enable the board (and the other party or parties) to understand immediately why the decision is alleged to be incorrect, and on what facts the appellant bases its arguments, without first having to make investigations of their own. [2.3]

Moreover it is also established case law that grounds sufficient for the admissibility of an appeal must be analysed in detail vis-à-vis the main reasons given for the contested decision (see T 213/85; T 169/89; T 45/92). It is not a matter of whether the arguments put forward are actually effective, but rather that these arguments may in principle be considered to upset the reasons for the contested decision. [2.4]

In the present case, [there are] three points at issue, namely lack of clarity (A 84), added subject-matter (A 123(2)) and lack of inventive step. [2.5]

In the statement of grounds of appeal the appellant alleges in substance that the examining division was incorrect because of a mistake in the interpretation of documents D2 and D3. These documents did not relate to an adaptive projection filtering scheme as specified in claim 1. Therefore the argumentation given in the decision under appeal as to why the method of claim 1 did not involve an inventive step was in the appellant’s opinion incorrect. [2.6]

Hence, as far as the admissibility of the present appeal is concerned, the only question at issue is whether the statement of grounds of appeal contains a sufficient reasoning as to why the decision under appeal should be set aside with regard to the two other legal reasons for refusal, namely lack of clarity and added subject-matter, to thereby fulfil the requirements of A 108, third sentence. [2.7]

With respect to the first of these other legal reasons for refusal, namely lack of clarity, the “clarification of the difference between projection data and image data” given in the statement of grounds of appeal has, in the board’s view, no connection with the clarity problems discussed in the [decision refusing the application]. [2.7.1]

With respect to added subject-matter, the clarification submitted by the appellant has, in the board’s view, no connection with the objection raised in [decision refusing the application]. [2.7.2]

The appellant’s argument that the main objection related to inventive step has no basis in the facts of the case. In the present case the third reason for refusal (lack of inventive step) is not a single main reason on which the other two depend. Instead any one of the three reasons individually constituted a reason for the refusal of the application.

For instance, the reason based on A 123(2) related to an allegedly undisclosed generalisation. Even if the appellant’s assessment that the claimed subject-matter involved an inventive step (in the whole scope of the claim) was correct, an infringement of A 123(2) caused by an undisclosed generalisation nevertheless would result in the application having to be refused. Also in this case the board’s opinion on the issue of inventive step would be without any effect on the other issues. Thus in the present case the main reasons given for the contested decision are not analysed in detail in the statement of grounds of appeal. [2.8]

Consequently the appellant effectively leaves it to the board to ascertain any facts substantiating the appellant’s assertion that the decision under appeal was incorrect also in respect of the first and second reasons for refusing the application. This in effect amounts to a request that the patentability of the subject-matter denied by the department of first instance be reconsidered without giving any reasons as to why the decision of the first instance should be set aside as far as the first and second reasons for refusing the application are concerned. The appeal is thus not substantiated. [2.9]

For these reasons it is decided that the appeal is rejected as inadmissible. 

Recent decision T 844/05 comes to the same conclusion in a situation where an application was refused on the grounds of lack of novelty and inventive step as well as unallowable amendments and where the appellant’s statement of grounds of appeal only contained arguments in respect of A 123(2).

To read the whole decision, click here.

T 323/08 – No Fallback On Ghost Alternatives

This is one more case where the EPO found an amendment to be an inadmissible intermediate generalisation. The patentee had convinced the Opposition Division (OD) that the claim as amended corresponded to an implicit alternative. The Board won’t have it that way.

Claim 1 of the main request read:

Device (Vorrichtung) to convey work pieces, particularly suspended, plate-shaped work pieces like metal sheets or plates with at least a conveyor belt (1) revolving around a retaining device (Haltevorrichtung) (3) for conveyance of work pieces (W) adhering thereto, wherein for retaining the work pieces on the conveyor belt (1) a controllable or regulatable installation (Einrichtung) (6) for generation of negative pressure is provided, in which an opening plane (22) described by suction ports (7) is recessed from the retaining device (3) at a distance (A) vis-à-vis a conveyor plane (F) created by the exterior side of the conveyor belt (1) so that a gap (Z) is formed between a work piece (W) adhering to the conveyor belt (1) and the opening plane (22) and the work piece (W) is held on the conveyor belt (1) by a negative pressure which is created in the gap (Z), characterised In that an installation (Einrichtung) (8, 23, 25, 26, 29, 30, 32) for ventilating the gap (Z) is provided on the side of the device (vorrichtungsseitig) so that the work piece is maintained on the conveyor belt (1) by dynamic negative pressure which is created.

[…] Claim 1 of the main request differs from Claim 1 as granted in that the expression “on the side of the device” has been added. [1.1]

[…] The OD considered that the amendment of claim 1 was limitative and that it fulfilled the requirement of A 123(2).

It has acted on the assumption that the amendment was implicitly contained in the description of the opposed patent which states (column 3, lines 11 to 13): “In some cases the installation for ventilating the gap can also be provided on the side of the work piece (werkstückseitig). [3.1]

[…] According to a first line of argumentation, the assessment of the amendment in view of A 123(2) has to take into account that claim 1 as granted defines that a installation for ventilating the gap (hereafter : the ventilating installation) is provided. This definition does not contain any limitation whatsoever concerning the disposition of the ventilating installation.

Therefore, when interpreting claim 1 as granted it has to be assumed that the general feature according to which a ventilating installation is provided encompasses both possibilities mentioned in the opposed patent, i.e. that the ventilating installation is provided on the side of the device or on the side of the work piece.

Thus the amendment only leads to an admissible limitation of claim 1 as granted to one of the two implicit (mitzulesend) possibilities, which is not open to criticism in view of the requirement of A 123(2). [3.2.1]

According to a second line of argumentation, the addition of the expression “on the side of the device” limits the device according to claim 1 to one of the two possibilities disclosed in the description of the original application with respect to the ventilating installation. Both possibilities, i.e. a providing the ventilating installation on the side of the work piece and on the side of the device are clearly and unambiguously disclosed in the description of the application. Therefore, a limitation to one of them is admissible. [3.2]

According to the [opponent] the amendment of claim 1 corresponds to an inadmissible extension because the description of the original application only contains embodiments wherein the ventilating installation is provided on the side of the device. In contrast, the amendment, which only refers to providing the ventilating installation on the side of the device but not to forming and providing the ventilating installation according to the embodiments of the description, is an inadmissible intermediate generalisation that is not based on the description. As a matter of fact, the amendment leads to a situation where the teaching of claim 1 also comprises embodiments of ventilating installations which had not been disclosed in the original application. [3.3]

The Board agrees with the [patentee] in that, as correctly stated in the impugned decision, the amendment leads to a limitation of the claim as granted. Therefore, the requirement of A 123(3) is fulfilled. [3.4]

However, the Board does not consider the explanations of the [patentee] with regard to the requirement of A 123(2) to be correct. […]

As far as the amendment of claim 1 is concerned, it is undisputed that the expression “on the side of the device” […] is not explicitly disclosed in the application on which the opposed patent is based. [3.5]

In contrast to the first line of argumentation of the [patentee] the Board is of the opinion that it is not correct, in view of the interpretation of claim 1 as granted, that this claim 1 is to be interpreted such that it comprises two general possibilities concerning the provision of a ventilating installation, i.e. on the side of the device and on the side of the work piece.

It is true that claim 1 as granted does not define how the ventilating installation is to be provided.

If, arguendo, the argumentation of the [patentee] is followed and the description of the opposed patent is adduced for interpreting claim 1, then for evaluating the way in which the ventilating installation is provided the part of the description invoked by the patentee (page 4, lines 18 to 29 of the application […]) has to be taken into account, and not a different, more general version that is only based on this part. [3.5.1]

In this part of the description a skilled reader could recognize a separation between providing the ventilating installation on the side of the device and providing it on the side of the work piece. On the one hand the description states:

“Preferentially the ventilating installation has ventilation openings that are regularly arranged on the side of the holding device facing the work pieces, so that there is an essentially uniform dynamic negative pressure over the complete length of the gap. However, it is also possible to ventilate the gap e.g. by providing grooves perpendicular to the conveying direction in the conveyor belt.”

On the other hand:

“In some cases the ventilating installation can also be provided on the side of the work piece, for instance when the work piece has openings (Durchbrüche) of suitable size or a suitably rough surface.” [3.5.2]

Based on the first part of the description, one has to take into account, as far as the way of providing the ventilating installation is concerned, that if the ventilating installation is provided on the side of the device, the following arrangements are to be taken into account: either the ventilating installation has ventilation openings that are regularly arranged on the side of the holding device facing the work pieces, or the ventilating installation is very different and grooves have to be provided in the conveyor belt perpendicular to the conveying direction.

As these arrangements are merely two very different embodiments of ventilating installations provided on the side of the device, only these embodiments can be considered, to the extent of the factual disclosure, when claim 1 is interpreted. In view of providing the ventilating installation on the side of the device, only the above mentioned concretely disclosed possibilities (regularly arranged ventilation openings or grooves provided in the conveyor belt perpendicular to the conveying direction) can be taken into account.

In contrast, the opinion of the [patentee] appears to be based, incorrectly, not on the factual content of the disclosure of the part of the description under consideration but on a generalisation of the content of the disclosure of this part of the description that encompasses also other possibilities than the both concrete embodiments. [3.5.3]

Therefore, contrary to the opinion of the [patentee], claim 1 as granted cannot be interpreted in such a way that it comprises, as far as the way of providing the ventilating installation is concerned, both general possibilities “on the side of the device” and “on the side of the work piece”.

Consequently, the admissibility of the amendment of the claim cannot be derived from it being only the deletion of one of two possibilities contained in claim 1 as granted. [3.5.4]

[…] As the parts of the description and figures invoked by the [patentee] for justifying the admissibility of the amendment of the claim do not allow to generalise beyond the possibilities that have been concretely disclosed through embodiments, as there is no indication whatsoever [for such a generalisation], these parts of the description and figures cannot, as such, lead to the amended claim 1 of the main request being based on an admissible amendment, as suggested by the second line of argumentation of the [patentee]. [3.5.6]

[…] Thus claim 1 of the main request contravenes the requirements of A 123(2). [3.5.8] 

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

T 611/07 – Lost In Translation ? Not Really.

[…] The Respondent argued firstly that document D11a could not be regarded as the closest prior art, since it could not be regarded as a document, as it was merely the English translation of 23 from a total of 167 paragraphs of the Japanese document D11. It was important to consider the whole content of a document when assessing its true disclosure, this not being possible in the present case, as large portions of the original document D11 were missing. The remaining disclosure of this document was thus not available, since document D11 was in Japanese, Japanese not being an official language of the EPO.

However, the Board holds that there are no reasons to doubt the validity of what is actually disclosed in D11a, the Respondent not having provided any arguments in this respect. The mere fact that only a part of a document is available does not, in itself, throw doubts on the disclosure of said part of the document. Thus, although document D11 contains additional information to that disclosed in document D11a, this fact does not in any way depreciate the actual disclosure of document D11a, more particularly that of claims 1, 5 and 6 together with the definition of the water-insoluble powder in paragraph [0074].

The Board thus holds that document D11, to the extent of its translation into English in the form of document D11a, is to be considered as forming part of the state of the art for the purposes of A 56. [4.2.1] 

NB: I owe the knowledge of this decision to a recent post on Le blog du droit européen des brevets.

To read the whole decision, just click here.

T 323/07 – No Tidying Up in Post-Grant Amendments

The present decision reaffirms what the Boards had already made clear under the EPC 1973: amendments in opposition proceedings must be occasioned by a ground for opposition.

[...] The sixth auxiliary request consists of six claims, whereby Claim 1 corresponds to Claim 5 as granted. Claims 3 and 4 are new dependent claims. [5.1]

Claim 4 refers - inter alia - back to Claim 3 and thus encompasses a manufacturing method specifying the production of a (meth)acrylic acid homopolymer and requiring the method to comply with both conditions (1) and (2) set out in Claim 1 of the sixth auxiliary request.

As pointed out by [one of the opponents] at the oral proceedings before the board, there is no basis in the application as filed for this combination of features. It may well be that, as argued by the appellant, each individual feature has a basis in the application as filed, namely in the passages on page 16 of the application as filed […] and in Claim 5 as granted and Claim 5 as originally filed, respectively, […]. However, the content of the application as originally filed must not be treated as something in the nature of a reservoir from which it would be permissible to combine different individual features pertaining to preferred embodiments in order to create artificially a particular new embodiment, unless the application as originally filed itself suggests such a combination of features. In the present case, however, the combination of features as now claimed in Claim 4 is neither explicitly nor implicitly suggested by the application as originally filed. Therefore, Claim 4 of the sixth auxiliary request contravenes A 123(2). Consequently, for this reason alone, the sixth auxiliary request has to be refused. [5.2]

Furthermore, it is conspicuous to the board that dependent claims 3 and 4 have no counterpart in the claims as granted. R 80 states that “Without prejudice to R 138, the description, claims and drawings may be amended, provided that the amendments are occasioned by a ground for opposition under A 100, even if that ground has not been invoked by the opponent.” It is in principle not conceivable which ground of opposition could be overcome by filing new dependent claims. The purpose of R 80 is certainly not to tidy up the claims in order to improve the proprietor’s position in contingent national proceedings. Hence, Claims 3 and 4 of the sixth auxiliary request contravene R 80, which constitutes another reason why the sixth auxiliary request has to be refused. [5.3] 

To read the whole decision, click here.

A Farewell To Arm...and

You might have noticed that Armand Grinstajn is not blogmaster of this blog any more. This change is due to the fact that I have finally received the clearance to use my real name when blogging. There is no more need for a pseudonym.

I have never considered pseudonymity to be problematic, but some readers have raised concerns and did not feel comfortable with a pseudonymous blog, for reasons which I do not find persuasive but which I respect. I hope Armand’s departure will relieve them.

So long, Armand !

J 5/07 – Not All Reactions Are Valid Responses

By communication of the Examining Division (ED) dated 16 March 2005 the appellant was invited to file observations according to A 96(2) EPC 1973 within a period of 4 months. No observations were received by the EPO by 26 July 2005. On 5 August 2005, the appellant requested further processing of the application and paid the prescribed fee, but did not file any observations in response to the ED’s communication. By a letter dated 13 September 2005 the appellant was informed that the application was deemed to be withdrawn under A 96(3). By decision dated 29 December 2005 the request for further processing was rejected for the reason that the omitted act was not completed in due time. The appellant filed an appeal against this decision on 7 March 2006 and paid the appeal fee simultaneously. The appellant argued essentially that he had filed a divisional application based on the present application.

The decision under appeal correctly refused the appellants request for further processing under A 121 on the ground that the omitted act was not completed in due time. [2]

The omitted act was the failure to submit observations in reply to the communication of the ED dated 16 March 2005 within the time limit of four months as fixed therein according to A 96(2) EPC 1973 being then in force. [2.1]

The expiry of this four months time limit on 27 July 2005 without any reply led to the application being deemed to be withdrawn according to A 94(3). Such a deemed withdrawal shall be retracted under A 121 if the applicant requests further processing of the application within two months of the date on which either the decision to refuse the application or the communication that the application is deemed to be withdrawn (in the present case, the communication noting the loss of rights dated 13 September 2005) is notified, the further processing fee is paid, the omitted act is completed within this two months time limit (A 121(2)) and a positive decision of the ED on the request is issued according to A 121(3). [2.2]

The Board sees no reason to doubt that the filing of a divisional application was a reaction of the appellant to the ED’s objections to the claims of the present application made in its communication dated 16 March 2005. This does not mean, however, that the filing of a divisional application could be regarded as a response to the said communication within the meaning of A 96(2). [2.3]

A divisional application is legally and administratively separate and independent from the grant proceedings concerning the parent application (see G 1/05 [3.1 and 8.1]; T 441/92 [4.1]). The filing of a divisional application leaves the text of the patent application objected to unamended. Therefore, from these considerations no logical or legal basis can be found for treating actions made in a grant procedure for one application (the divisional) as amounting to the procedural step needed to make up for a failure to comply with a time limit to be observed in entirely separate grant proceedings (the parent). [2.4]

According to the appellant’s submissions during oral proceedings the divisional application as filed was identical to the parent application, it was, however, intended to narrow the claims during the further divisional proceedings. However, as the divisional application was identical to the present parent application, no one could have had any reason to assume that this divisional application was intended to be a reply to the communication dated 16 March 2005 in the present parent application. [2.5]

[…] Hence implying that the action of filing a divisional application was sufficient, in the present case, to meet the further processing requirements, as suggested by the appellant, would have been in breach of A 121(2) second sentence, a provision not leaving the requirements to be met in the discretionary power of the department competent to decide on the omitted act (A 121(3)). [2.7] 

To read the whole decision, click here.

T 1053/06 – Cheekiness At Its Best

This decision deals with an appeal against the refusal of an application for lack of inventive step.

In a reply [to the Board’s provisional opinion] the appellant announced that it would not pay the renewal fee under R 51(2) which would be due in May 2008. It also announced it would not attend the scheduled oral proceedings (OPs). Furthermore it was requested that, in order to avoid unnecessary time and effort in preparing for the OPs these be rescheduled to a date after expiration of the six months surcharge period after which the application would be deemed to be withdrawn. The appellant also requested that this letter should not be included in the part of the file open to public inspection. [VI]

[…] As regards the appellant’s request to postpone the OPs, a change of date for OPs “may exceptionally be allowed in the Board’s discretion following receipt of a written reasoned request” (see Article 15(1) RPBA). It appears from the use of the word “exceptionally” that the reason or reasons given for a postponement must be out of the ordinary and must outweigh any other considerations the board may take into account. In the present case the reasons given clearly indicated that the appellant had chosen not to pursue this case further and would prefer its patent application to be lost for non-payment of the next renewal fee at a later date rather than by an adverse decision of the board now. Those reasons are directed entirely to the convenience of the appellant which, until it received the board’s negative preliminary opinion, had preferred to pursue the appeal proceedings and had indeed itself requested OPs. [2]

Against those reasons the board must consider the interests of the public and of justice. It would clearly not be in the interest of efficient administration of appeals for the board to allow parties to decide whether or not OPs they have requested should in fact be held and if so when. Further, in cases such as the present when it would be too late to give another party or parties the requisite two months notice of OPs for the date appointed in this case, a postponement would unfairly prejudice by delay other appeals pending before the board. Perhaps most importantly, it would be unfair on the public for the board, without receiving any reasons from an appellant applicant, to extend the life of a patent application which it considers likely to fail beyond the date on which the public has, until now, expected a final decision. Accordingly, the board considered the request for postponement had to be refused. [3]

The appellant’s further request to exclude its request for postponement from the public part of the file was also not allowable. Under A 128(4) there is a general right to inspection of the file of any published European patent application or patent subject only to restrictions laid down in the Implementing Regulations. Those restrictions are to be found in R 144 and are limited to:

(a) the documents relating to the exclusion of or objections to members of the Boards of Appeal or of the Enlarged Board of Appeal;

(b) draft decisions and notices, and all other documents, used for the preparation of decisions and notices, which are not communicated to the parties;

(c) the designation of the inventor, if he has waived his right to be mentioned under R 20(1);

(d) any other document excluded from inspection by the President of the European Patent Office on the ground that such inspection would not serve the purpose of informing the public about the European patent application or the European patent.

None of (a),(b) or (c) can apply in the present case and, as regards (d), the appellant has not relied on any exclusion by the President. Since OPs before the boards of appeal are public and the summonses thereto and the dates thereof are public information, it would appear highly unlikely that any documents relating to the appointment or postponement of such proceedings could be the subject of such an exclusion since such documents, for example the appellant’s request for postponement, necessarily serve the purpose of informing the public about the European patent or patent application in question. [4] 

Some have a lot of nerve.

To read the whole decision, click here.

T 212/07 - It's Pay Time, Folks

This decision deals with a classical case of apportionment of costs. It is noteworthy, however, because the Board directly fixed the amounts to be paid by the party whose fault made the other party incur additional costs.

[…] The Board has power under A 104(1) to make an order for a different apportionment of costs “for reasons of equity”. As to such reasons, the case law of the Boards of Appeal establishes that a party who receives a summons to oral proceedings (OPs) has an equitable obligation either to appear at the OPs at the specified time and place, or to notify the Board as soon as it knows that it is not going to appear at such OPs. See T 930/92 [6.1].

The Board has no direct evidence about when the Appellant decided, and thus knew, that it was not going to attend the OPs. Although the Respondent has asserted that the Appellant never had any intention of attending the OPs there is no evidence for this. All that the Board knows from the Appellant is that the reason it decided not to attend the hearing was the high cost involved. As to this, however, the Board accepts the Respondent’s submission that the costs of attending had not suddenly escalated shortly before the date of the OPs and that the Appellant would have been aware of the costs involved when originally making a request for OPs in the grounds of appeal. More to the point, the Appellant would have been aware of the costs when it received the summons in February 2009. The summons would also have focussed the Appellant’s mind on the forthcoming hearing and caused it to consider its position. As already pointed out, the summons was accompanied by a communication which was generally negative as regards the Appellant’s prospects of success. The Appellant never filed any substantive response to the communication (of course, it was not obliged to), the only response being the letter dated 8 May 2009 saying that it would not be attending the OPs. Given this background, and in the absence of any other evidence or response from the Appellant on this issue, the Board considers that it is a reasonable inference to draw, on the balance of probabilities, that the Appellant had decided by about the end of March at the latest (i.e. giving the Appellant the benefit of a period of about one month to digest the contents of the communication) that it was not worth its while to incur the expense of coming to the OPs. It follows that the Appellant failed in its duty to inform the Office and the Respondent as soon as it knew it was not going to attend. The Board therefore considers it right for reasons of equity to make a different apportionment of costs. [6.2]

The Board also has power to make an order which fixes the amount of costs to be paid. See T 934/91 and T 323/89 and R 88, which governs the present case. The Board proposes to exercise such power. [6.3]

As to this, the order for apportionment of costs should be such as to compensate the other party for the unnecessary, i.e. wasted costs which it has incurred as the direct result of the Appellant’s failure in its duty. See T 952/00 [5]. In the Board’s view the incurring of such costs should also be a foreseeable result of such failure, and the costs should be reasonable. [6.4]

If in the present case the Appellant had informed the Office and the Respondent at the end of March or in early April that it did not intend to be present at the OPs, then on the balance of probabilities the Board would have cancelled the date soon after being told this, just at it did when the Board received the Appellant’s fax on 8 May 2009. This was because nothing had happened to change the Board’s initial negative view of the appeal and the Board was in a position to issue a decision dismissing the appeal without hearing the Respondent further in OPs. The Respondent had only requested OPs against the event that the Board did not intend to dismiss the appeal. Had the Board cancelled the date set for OPs sometime in April, then none of the costs which the Respondent now claims would have been incurred. It follows that all these costs were wasted as the direct result of the Appellant’s failure. [6.5]

As regards the Respondent’s costs of air travel and hotel accommodation for its representative, the nature of these expenses and the amounts appear perfectly reasonable. It was also foreseeable that such costs would be incurred when they were in fact incurred. The Board therefore intends to make an order in respect of the sums claimed, i.e. € 306 in respect of air fares (€ 325.79 less € 19.79) and € 100 in respect of hotel accommodation, making € 406 in total. [6.6]

As to the costs of preparing for the OPs, the Board accepts that a representative will properly spend time preparing himself for OPs immediately before they take place, the cost of doing so being properly chargeable to his client. Although this preparation will often take place a day or so before the proceedings, in the present case this work was done the previous week. Nevertheless the Board accepts the Respondent’s representative’s explanation for this as being perfectly reasonable in the circumstances. The Board also considers that it was foreseeable that the Respondent’s representative might prepare for the OPs a week or so in advance. Finally, the Board has no grounds for saying that the amount claimed is not reasonable. The Board therefore intends to make an order in the amount claimed also, i.e. GBP 1280. [6.7] 

To read the whole decision, click here.

T 1009/05 – Reformatio Paulo In Peius (*)

In this case, the patent was maintained in amended form by the Opposition Division (OD). Only the opponent filed an appeal. During the oral proceedings (OPs) before the Board of Appeal, the patentee amended claim 1 as follows (with respect to the claim as maintained by the OD): (click to enlarge)

[According to the opponent, the] amendments changed the meaning of the expression in claim 1 “received electronic mail” from that according to granted claim 1. Claim 1 upon which the interlocutory decision was based did not comply with A 123(3) because it covered cases where no transmission error had occurred. Hence admitting the main and first auxiliary requests would be contrary to the principle of a prohibition of reformatio in peius, this principle requiring the respondent to defend the patent in the form in which it was maintained. If the expression “received electronic mail” were understood as that received internally by the e-mail computer from the LAN controller then every mail would fail before it left the electronic mail apparatus, since every received e-mail would be classed as a transmission failure. If however the expression “received electronic mail” were understood as being an electronic mail received by the e-mail computer from the e-mail network then the question arose as to whether a transmission failure had occurred at all; the expression “received electronic mail” had to have a consistent meaning throughout claim 1. [XVIII]

[…] As to the question of reformatio in peius, in the present case, in which only the opponent appealed against the interlocutory decision by the OD, the prohibition of reformatio in peius (see G 9/92 and G 4/93) means that the patentee is primarily restricted in appeal proceedings to defending the patent in the form in which it was maintained by the OD. Hence the patentee would be prevented from returning to the granted claims.

In the present case the board takes the view that the amendments according to the main and first auxiliary requests take the claims forming the basis of the interlocutory decision as a starting point and are aimed at overcoming objections raised in the appellant’s letter and in the debate at the OPs. Thus the amendments are seen as appropriate and necessary to defend the result obtained before the OD. Consequently the board decided to admit the main and first auxiliary requests into the proceedings. [2] 

The claims finally fell for lack of clarity; the patent was revoked.

I find the reasoning of the Board somewhat ‘light’. Perhaps the Board quickly saw the lack of clarity and did not want to spend time on the A 123 issue. If the opponent was right and the amendment constituted an improvement of the patentee’s position with respect to claim 1 as maintained by the OD, then the reasoning of G 1/99 should have been applied.

To read the whole decision, click here.

(*) “Reformation/change to the - a little bit - worse”

R 5/08 – On the Role of Requests in Petitions for Review

The petition as filed identified two of the grounds for petition mentioned in A ll2a(2) and R 104, namely a fundamental violation of A 113 EPC and deciding on an appeal without deciding on a request relevant to that decision (A ll2a(2)(c) and (d) respectively).

The Enlarged Board’s communication of 26 August 2008 indicated that it considered the latter ground unallowable since it appeared that all relevant requests had in fact been considered. […] The petitioner confirmed in its letter of 5 January 2009 that it did not rely on that ground. However, it remains the fact that on any view the petition identified one of the specified grounds for petition, namely that in A ll2a(2)(c). [5]

The respondent argued the petition was inadmissible for another formal reason, namely that the requests in the petition were not pursued but were replaced by other requests presented at the oral proceedings on 1 October 2008 and that, being more than two months after the notification of the decisions complained of, a new and different petition was filed which was invalid because out of time.

The Enlarged Board does not accept that argument and agrees with the petitioner that R 107 (which specifies the necessary contents of a petition) does not specifically require requests. The only requirement which can be derived from the wording of R 107(2) is that the petition must make clear that the petitioner wants the decision of the Board of Appeal to be set aside. In the present case that request was expressly made in the petition. [6]

The relief which the Enlarged Board can grant if a petition is allowed is in any event specified precisely by the legislation: A 112a(5) and R 108(3) provide that, if a petition is allowable, the Enlarged Board shall set aside the impugned decision and “reopen” (A ll2a(5)) or “order the re-opening” (R 108(3)) of the proceedings before the Board of Appeal. R 108(3) also empowers the Enlarged Board to order replacement of members of the Board of Appeal who participated in the impugned decision. [7]

With the exception of that last measure which is discretionary, the outcome of a successful petition is therefore prescribed by legislation. In those circumstances, the role of requests in petition proceedings is necessarily limited and the Enlarged Board cannot agree with the respondent that, by merely bringing requests it had not been obliged to specify into conformity with the legislative provisions, the petitioner has filed a new and invalid petition out of time. 

To download this decision, click here.

R 5/08 – Party Involvement in Petition Proceedings

The present decision concerns a petition for review filed by the opponent in case T 601/05. In fact, it is one of the rare decisions on petitions for review which went beyond the preliminary examination (first stage).

In T 601/05, the Board of Appeal had set aside the decision revoking the opposed patent. After being notified of the petition for review, the patentee/respondent filed a purported reply to the petition. The Enlarged Board (EBA) then issued a communication which drew the attention of all the parties to R 109(3) and directed them not to file further written submissions until it had decided whether or not the petition was clearly inadmissible or unallowable. The EBA then repeatedly held oral proceedings (OPs): first with the petitioner alone and then in the presence of all the parties. The patentee complained that its right to be heard had been violated, in particular because it had not been summoned to the first OPs. This prompted the following comments by the EBA:

The EBA considers that it should comment on [the respondent’s complaints] in order to clarify the position for potential parties in other possible petition proceedings. In the judgment of the EBA, the respondent wholly misunderstood the two distinct stages provided by A ll2a and R 109 for the treatment of petitions for review. [28]

R 109(1), headed “Procedure in dealing with petitions for review”, provides in its first sentence that: “In proceedings under A ll2a, the provisions relating to proceedings before the Boards of Appeal shall apply, unless otherwise provided.”

As regards the procedure for the first stage of petition proceedings, there are indeed such measures “otherwise provided”, namely R 109(2) and (3). [29]

R 109(2)(a) provides that the EBA composed of three members shall examine all petitions for review and reject those which are clearly inadmissible or unallowable. R 109(3) states that the EBA in that composition shall decide “without the involvement of other parties and on the basis of the petition.” The cumulative effect of those two provisions is that, in the first stage of petition proceedings, parties other than the petitioner are not to be involved in the proceedings. Such other parties are beyond doubt parties and are indeed called such in R 109(3) itself, but they are not to be involved. So long as they are not involved, they have no right to be heard and thus no complaint, such as that made by the respondent, of a denial of the right to be heard can arise. [30]

The respondent’s distinction between involvement in proceedings and involvement in a decision is a strained and artificial interpretation of R 109(3). That provision says quite clearly “The EBA composed according to paragraph 2(a) shall decide...”. As would only be expected of any judicial decision, the only persons involved in the decision are the appointed decision-makers who, under A ll2a and R 109(2)(a) and (3), are three members of the EBA. Accordingly, the expression “without involvement of the parties” means without the parties’ involvement in the proceedings. That is the straightforward and common sense interpretation of R 109(3) and the only interpretation it can bear. [31]

It follows that all the respondent’s other arguments in this respect are redundant. A 112(2) does not apply, even by analogy, since R 109(3) “otherwise provides”. The provisions about OPs (A 116, R 115(1), first sentence, and R 126) do not apply to parties other than the petitioner because they are not involved - again, R 109(3) has “provided otherwise”. This is not contrary to A 125 EPC as there is no breach of the principle of good faith because no duty of good faith lies towards those not involved. Nor is there a contravention of A 164(2) because R 109(3) is not contrary to A 113(1). [32]

There is general support for the EBA’s view in the travaux préparatoires which, at several stages of the legislative process, stressed the need for a quick screening process to be conducted by a three member panel of the EBA in order to reject petitions which clearly cannot succeed. It is clear that, in advocating this fast, summary first stage of proceedings, the legislator was actually intending to benefit parties other than petitioners by not requiring them to take any steps in response to a petition until the EBA should be satisfied that it was not to be rejected as clearly inadmissible or unallowable. Thus, while the respondent argued that the first stage proceedings put it at a procedural disadvantage, the first stage is actually advantageous to parties other than petitioners. [33]

For completeness it should also be observed that non-petitioner parties, although not summoned to OPs in the first stage, may of course attend such proceedings which are public. Further if, as a result of the first stage proceedings, a petition is not found by unanimous decision to be clearly inadmissible or unallowable, it will then be considered by the EBA in the larger composition provided for in R 109(2) (b) and, if and when that second stage is reached, the other parties are to be involved. [34]

To download this decision, click here.

T 780/05 – How Not To Present A Witness

This decision deals with the requirements for a witness to be heard by a Board.

The request filed in writing by Opponent 2 during the oral proceedings (OPs) before the Board, read as follows: “It is requested to provide proof, by hearing the witness Bob Cormia, to be summoned via Opponent 2, that the sheets “XIR-70 2mil”, which had been supplied to the clients listed in Appendix C, had the longitudinal and transversal shrink values corresponding to material data sheet MS-0046. In the event of witness Cormia not being available any more, it is requested to summon witness Dave Jones, also via Opponent 2.”

[…] During the OPs Opponent 2 filed the request that Mr Cormia be heard as a witness.

This hearing was requested in connection with the alleged prior uses. The testimony of Mr Cormia was believed to prove that the shrinking values in both directions of stretching of the XIR-70 2mil sheets, which according to Appendix C had been delivered, could be calculated to fall into the claimed domain. [4.1]

This request is to be rejected as late filed (Article 13(1) RPBA).

The request was first filed during the OPs before the Board, when the novelty of the claimed subject-matter was discussed. It differs from the earlier requests that Mr Cormia be heard as a witness. Therefore, the request was filed at an extremely late stage of the proceedings. Moreover, the request is insufficiently substantiated because there is no prima facie evidence concerning the circumstances which are expected to qualify Mr Cormia to make reliable statements on the facts of the case, i.e. precise knowledge with respect to the technical facts of the delivery mentioned in Appendix C. This concerns the precise role that Mr Cormia played in [opponent’s company] with respect to the alleged prior use, his technical qualification in so far as it is relevant for the administration of the desired proof, and, finally, his implication in the contested operation. The available information on Mr Cormia does not make it apparent to which extent he has direct and objective knowledge concerning the deliveries according to Appendix C. The lack of substantiation of the offer of testimony is further underlined by the fact that in the course of the OPs a certain Mr Jones was offered as a possible replacement witness without any substantiation of the competence of the latter with respect to the question to be answered. [4.2]

The Board cannot accept the argument of the opponent according to which the same request for hearing of Mr Cormia as witness had already been made earlier. It is true that it had been proposed in the written proceedings to hear Mr Cormia as a witness, but only in view of distinct (but related) circumstances which did not refer to the problem of the sheets delivered according to Appendix C. […] [4.3]

Under these circumstances a continuation of the proceedings with summons of the witness and fixing of new OPs was not justified from the point of view of procedural economy and because of the lack of substantiation of the offer of testimony. Therefore the corresponding request cannot be allowed. [4.4]

The present situation differs from the situation underlying decision T 474/04. In this decision, basic questions concerning the meaning of hearing witnesses were discussed and the fact that the evaluation of the offered evidence was anticipated by a refusal to hear the witness was criticized. The question of sufficient substantiation of the offer of testimony, which is decisive here, was not dwelt upon. [4.5] 

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

T 1511/06 – Disclosure Through Secret Sales

This decision deals with a case of prior use. The opponent (Siemens) pointed out that VDO had supplied throttle valves according to the invention to Mercedes-Benz before the effective date of the opposed patent.

The decision is thoroughly reasoned. It gives a detailed analysis of the relationship between a car manufacturer and one of its component suppliers and raises some interesting points. I find the distinction between the secrecy of sales and the secrecy of the object sold quite to the point.

[…] The state of the art comprises any information which has been made available to the public (A 54(2) EPC 1973). It is sufficient that a single member of the public was in a position to gain access to it, provided that he was not bound by an obligation to maintain secrecy at the time when he gained access (see T 1081/01).

In the present case, the crucial point to be assessed is whether or not Mercedes has to be considered as a member of the public not bound by an obligation to maintain secrecy. [4.2.1]

The Board has no knowledge of an express secrecy agreement. Therefore, it has to be established whether it results from the circumstances that a tacit secrecy agreement existed between VDO and Mercedes. [4.2.2]

It is established case law that if at the time of receipt of an information, the recipient was in some special relationship to the donor of the information, he could not be treated as a member of the public, and the information could not be regarded as published for the purposes of A 54(2) EPC (see T 1081/01 [8]). In this respect the following is observed:

(a) The throttle valve shown in document D15 is a typical product of VDO which produces throttle valves of various kinds for use by the automotive industry. In contrast, Mercedes is an example of a typical potential end user of such valves. There is no evidence on file that the throttle valve in question was actually designed by Mercedes and only manufactured by VDO, nor that Mercedes would have any special rights in the technical solutions of the throttle valve, such as a patent or the like. The fact that the underlying technology of throttle valves of the type in suit typically constitute the intellectual property of a part manufacturer is also demonstrated by the parties to the present appeal. Both Appellant and Respondent are part manufacturers and not car manufacturers.

(b) The Board has no information that VDO and Mercedes had concluded a development agreement or entered into any other contractual relations that would indicate either of them having had any particular interest in a secrecy agreement.

(i) As mentioned above, such valves are developed and designed by VDO. The Board recognises that it might be necessary to adapt its dimensions in response to wishes of the end user, or even to individualise the product by using the logo or trademark of the end user. This, however, does not mean that the valves are the result of a technical co-operation between VDO and the end user, i.e. that the valves are a common development.

(ii) Thus, this appeal case is different from those cases of sub-contracting cited by the Respondent. In these cases, a common interest for secrecy was assumed, either because there was a technical co-operation for the common development of a new product (see T 830/90) or for the manufacture of a product developed by the donor of the order (T 799/91).

(c) The Board has no reason to doubt that part manufacturers and car manufacturers often impose a secrecy obligation on each other, for example in cases of common development. However, this does not appear plausible in the present case. Since throttle valves are a typical product of VDO, it cannot be assumed that VDO had an interest in accepting any secrecy obligation with respect to its own products, as it would have prevented it from selling its own product to other car manufacturers. The same argument speaks against the assumption that Mercedes would have been in a special or preferential relationship with VDO in the sense that VDO itself would have intended to sell such throttle valves to Mercedes only. On the other hand, Mercedes has regularly purchased the sample throttle valves, i.e. paid for them. It is also not plausible that Mercedes would have accepted any restrictions from its own part supplier on how to exploit these valves, such as an obligation to request a preliminary consent from VDO before any public sale of the cars equipped with the valves in question. Moreover, it appears unlikely that it would be in the interest of Mercedes to be dependent on a single supplier for these throttle valves. Rather, it is more likely for Mercedes to have an interest that these valves are known to the public so that they could be ordered freely from other suppliers, and not only from a single source.

It is another matter that Mercedes could possibly have required from VDO to keep the fact of the sale secret, in order to prevent the leaking of any information to its competitors about the technical parameters of its engines. However, this is not equal to the obligation of keeping secret the existence of the throttle valve in suit as such, but merely the fact that such throttle valves have been adapted to the engines of Mercedes. […]

(e) The Board thus concludes that considering the relationship between VDO and Mercedes and also considering the overall technical features of the sold part in question it can not be assumed that a tacit secrecy agreement existed for the delivered throttle valves. In this respect, Mercedes has to be considered as a member of the public. [4.2.3]

In view of the foregoing, the Board is unable to conclude any restrictions imposed by the delivery of these throttle valves from VDO to Mercedes.

The Respondent referred to [case law] according to which a product made available for test purposes is to be treated as confidential.

But even if the delivery of these samples was considered for test purposes, the foregoing statement does not apply to the present case. If the possessor of the product is a member of the public, as in case T 221/91 or in the present case, the product has to be considered as being available to the public.

The Board thus concludes that the throttle valves delivered on 2 March 1994 were made available to the public. [4.2.4] 

To read the whole decision, click here.

J 12/07 – If You Need More Time, Justify In Time

The present appeal was filed after the Examining Division (ED) had rejected a further extension of the time limit for filing observations pursuant to A 96(2) EPC 1973.

[…] The decision under appeal correctly ruled that the right criteria had been applied in the decision refusing an extension of the time limit.

The existence of exceptional circumstances was not sufficiently substantiated within the time limits whose extension was requested.

The request, filed within the time limits, contained the mere statement that the client was a start-up company which had only very recently authorised the representative to draft and file a reply to the communication.

The applicant’s status as a start-up company is not an exceptional circumstance. In the request filed within the time limits, the applicant did not give any reasons for the fact that it had authorised the representative only a short time before the expiry of the time limit. Thus, in the decision under appeal, it was correctly regarded as no more than a delay in the applicant’s decision-making process and therefore an avoidable circumstance. [2.3]

Reasons given after the time limit for the request has expired cannot be considered.

The appeal is based essentially on the fact that the department of first instance should have accepted the reasons given in the appellant’s letter filed months after the refusal of the time-limit extension in reply to the ED’s communication noting a loss of rights under R 69(1).

Whether an extension of a time limit may be granted or ought to be refused can only be decided on the basis of the reasons put forward by the applicant at the time when the department of first instance makes its decision.

If these reasons do not justify a further extension of the time limit, the department of first instance has exercised its discretion properly and taken a correct decision by refusing the request.

Reasons given after the extension has been refused cannot be considered, and in subsequent appeal proceedings the board has no power to set aside the decision of the department of first instance and instead to exercise its own discretion in the light of reasons given at a later time.

In the present case, the request for extension was based on the late authorisation of the appellant’s representative as a result of the appellant’s being a start-up company. That reasoning does not in any way suggest that the late authorisation was due to financial difficulties rather than a lack of experience on the part of the appellant in patent matters.

Furthermore, even though the letter states the reasons referred to above, it still does not explain what specific circumstances prevented the company from dealing with the case. A mere general reference to financial difficulties is not sufficient.

The ED was therefore right to refuse reimbursement of the fee for further processing. Hence, the appeal is not allowable. [2.4] 

To read the whole decision, click here.

T 354/04 – Beware of Incomplete Standards

Claim 1 of the [new main] request read:

1. Use of a melt composition to make man-made vitreous fibres which are shown to be biodegradable in the lung wherein the composition has an analysis, measured as weight of oxides, which includes

Si02: 32 to below 45%

[…]

Other Elements 0 to 8%,

and wherein […] the composition has a melt viscosity at 1400°C of 10 to 70 poise, calculated according to Bottinga and Weill, American Journal of Science volume 272, May 1972, page 455-475 […] 

[…] Claim 1 is silent about the nature of the “other elements”. Only the description of the patent in suit contains a non-exhaustive list of “other elements” that “can be present in the composition in any amount that does not detract from the desired properties and which does not exceed 8%”: P2O5, B2O3, BaO, ZrO2, MnO, ZnO and V2O5 are specifically mentioned. With regard to the amounts of these “other elements”, it is indicated in the description that “each of the other elements is normally present in an amount of not more than 2%, except that P2O5 and/or B2O3 may be present in larger amounts”. Moreover, it is expressly mentioned that that “preferably, there is 1 to 8% ... P2O5 and 0 to 5% B2O3”. [6.2]

Claim 1 is restricted to the use of those melt compositions […] which meet the requirement of a melt viscosity value falling within the recited numerical range, the value to be considered being the viscosity value calculated according to the BW model described in [document] C28. [6.3]

[…] The question that must be answered in the first place is […] whether the person skilled in the art, considering the contents of the patent in suit and of C28, as well as common general knowledge on the filing date of the patent in suit, was actually in a position to calculate the viscosities of melt compositions having analyses throughout the ranges indicated in claim 1. [7.8]

[…] C28 describes a model for predicting instead of measuring the viscosities of multi-component silicate melts. At first glance C28, which is praised as the authoritative reference in viscosity calculations, appears to describe a simple calculation of the viscosity of multi-component melts requiring not much more than filling in available data in the formula (1):

wherein η is the viscosity, Xi is the mole fraction of the i-th component, Di is a constant associated with component i over a restricted range (in terms of mole percent SiO2) of composition, and each temperature has a particular set of Di constants.

When trying to apply the calculation model of C28 to the compositions embraced by the compositional ranges in claim 1, the skilled person is however confronted with difficulties due to a lack of data and to gaps in the information provided in C28. The teaching in C28 is incomplete insofar as the BW model as set out therein is not fully applicable to all the compositions as defined in present claim 1. [8]

[The compositional ranges in claim 1 include, inter alia, compositions comprising relatively high amounts of ZrO2 or P2O5.] As far as ZrO2 and P2O5 are concerned, C28 does not report any of the Di values needed for the calculation. The straightforward viscosity calculation according to formula (1) of C28 is thus not possible for the compositions comprising up to 8 weight % ZrO2 or P2O5. [8.1]

The authors of C28 indicate that in some cases, estimated or approximated Di values of certain components may be used in the calculation when the required Di values are not tabulated. However, C28 contains no guidance whatsoever having regard to approximations or estimations that could be applied in the case where a composition contains ZrO2 in more than just a negligible amount, let alone in a higher amount of up to 8% by weight. [8.2]

[...] C28 does not contain theoretical considerations which could be considered as a basis for enabling the skilled person to make appropriate, scientifically sound estimations of the Di values for ZrO2 and for P2O5 in amounts of up to 8 % by weight. [9.3]

To fill these gaps in C28, the skilled person could only speculate about appropriate estimations based on considerations not addressed in C28, and the viscosity calculated would thus depend on speculative Di values. In other words, depending on the specific underlying assumptions adopted by the skilled person, the estimations would not in any case give the same result. Under these circumstances, for the board, the skilled person would have to grope in the dark because he is not in a position to calculate the viscosity of these compositions as required by claim 1, i.e. based on the information comprised in C28, the patent and common general knowledge alone. [10.2]

In order to be able to calculate viscosity values according to the model of C28 for the compositions referred to under point 6.2.5, the skilled person would thus first have to investigate experimentally the quantitative impact of specific components such as ZrO2 and P2O5 on the viscosity of multi-component silicate melts in the SiO2 mole fraction range(s) concerned. The investigations necessary for obtaining the correct Di values or for checking the validity of an approximation not disclosed in C28 involve high temperature melt viscosity measurements, the evaluation of the data and cross-checking how they fit with the BW model. [11.3]

Neither the patent in suit nor C28 contain more specific instructions on how viscosity measurements and evaluations required for determining the results to be used in the BW model for P2O5 or ZrO2 in compositions as defined in claim 1 could be carried out. Moreover, a calibration of the measured data against C28 or patent data is not possible since these two documents do not contain examples of compositions comprising ZrO2 or P2O5 in amounts of up to 8 % by weight. The skilled person is thus forced to develop its own research program. For the board, there are however limitations to what can be expected from the skilled person. [11.6]

The board thus concludes that the experimental and evaluative work required from the skilled person represents an undue amount of experimentation in the sense of decision T 435/91. The skilled person would actually be forced to generate all necessary data in order to be in a position to calculate the viscosities of melt compositions having analyses throughout the full ranges indicated in claim 1. This undue amount of experimentation requires more than routine means and manipulations and requires more than merely common general knowledge. The skilled person cannot be expected to embark on the scientific research programme required for testing the validity of given approximations and/or for finding the correct Di values for the calculation of the parameter value which is needed for identifying those amongst the compositions falling within the compositional ranges of claim 1 which are actually the ones to be used according to the invention. Or, in other words, it is not up to the skilled person to overcome the limitations of the patent in suit and fill gaps left by the patentee in the information. [11.8]

The patent does not disclose the invention as claimed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (A 100(b)). [13]

Consequently, the main request cannot be allowed. [14] 

The moral of this story: When you have to refer to a standard for defining the way in which some claimed parameters are determined, do not forget to check that the standard is applicable in a straightforward manner to all embodiments that are covered by the claim.

To read the whole decision, click here.