T 832/08 – Trials And Tribulations

[1.1] The [patent proprietor] has filed nine new auxiliary requests 1 to 9 and a document D48 after the summons for oral proceedings (OPs), in a letter dated February 11, 2010, i.e. about six weeks before the OPs, and thereby amended its case (Vorbringen) with respect to the statement of grounds of appeal.

The admission of amendments of the case of an appellant after the filing of the statement of grounds of appeal is at the Board’s discretion. In particular, Article 13 RPBA provides:

“Amendments sought to be made after OPs have been arranged shall not be admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the OPs.”

[1.2] Late filed document D48 contains comparative trials with respect of the subject-matter disclosed in document D28. However, neither the statements of grounds of appeal nor the response to the summons to OPs dated October 14, 2009 announced comparative trials.

Thus the [opponents] had less than six weeks to assess these comparative trials in the light of all requests, including the new auxiliary requests 1 to 9 and possibly prepare comparative trials of their own. Therefore, the time left to these parties is much shorter than the period of four months that Article 12(1) RPBA imparts for filing a reply to the statement of grounds of appeal.

It is irrelevant that some of the [opponents] […] had knowledge of document D48 at least since July 2009 from another case, as did the [patent proprietor], because the [patent proprietor] had not announced any comparative trials. Therefore, the [opponents] could not expect the filing of the document at so late a point in time.

Moreover, the trials of document D48, even if known from another case, had to be assessed afresh in the light of the claims and arguments of the present proceedings.

The Board is also of the opinion that when filing comparative trials it is necessary to give the other parties to the proceedings sufficient time lest the principle of equal treatment of the parties be infringed.

As in the present case it would have been necessary to postpone the OPs in order to have sufficient time for analysing document D48, this document is not to be admitted under Article 13(3) RPBA.

[1.3] Subsequent to the extensive replies by the opponents, the last of which was filed on January 23, 2009, the [patent proprietor] has filed nine new auxiliary requests only six weeks before the OPs. Only the introduction of document D48 into the proceedings was given as a reason for justifying the late filing of these requests.

As document D48 is not admitted into the proceedings, the Board cannot accept this reason for the late filing of the new requests. […]

Thus the auxiliary requests 1 to 9 are not admitted, pursuant Article 13(3) RPBA.

The moral of the story: when you intend to file comparative trials before OPs, don’t forget to announce them as early as you can.

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

Interpretative Spotlight: “may”

[2.6] Further, claim 1 has been amended by deleting the term “may” at two occurrences.

The first deletion results in the amendment that water no longer “may exit” but “exits” the device. Since the original wording “may exit” has the meaning “optionally exits”, the deletion of the term “may” corresponds to the deletion of the term “optionally”, which is not to be objected to under A 123(2).

The second deletion of the term “may” modifying the expression “no ultraviolet radiation may be transmitted” into the expression “no ultraviolet radiation is transmitted” does not alter the technical meaning, but clarifies the absence of any transmission.

Therefore, these amendments to claim 1 are not to be objected to under A 123(2).

If you wish to download the whole decision (T 1628/07), please click here.

T 972/04 – Over The Top?

The application as filed contained the following claims:

1. A method for treating acute myelogenous leukemia in a human comprising administering to a human with acute myelogenous leukemia a therapeutically effective amount of arsenic trioxide.

2. A method for treating chronic myelogenous leukemia in a human comprising administering to a human with chronic myelogenous leukemia a therapeutically effective amount of arsenic trioxide.

3. A method for treating solid cancer in a human comprising administering to a human with a solid cancer a therapeutically effective amount of arsenic trioxide.

4. The method of claim 3 in which the solid cancer is cancer of the digestive tract, soft tissues, oesophagus, liver, stomach, colon, lung, skin, brain, bone, breast, or prostate gland.

5. A method for treating leukemia resistant to treatment with retinoids in a human comprising administering to a human in need thereof a therapeutically effective amount of arsenic trioxide or melarsoprol.

6. A method for treating leukemia, lymphoma, or solid tumors in a human, comprising administering to a human in need thereof a therapeutically effective amount of melarsoprol.

7. The method of claim 1, 2, 3, 4, or 5, wherein about 2.5 to 4.5 mg of arsenic trioxide is administered per day .

8. The method of claim 1, 2, 3, 4, or 5, wherein about 0.15 mg of arsenic trioxide per kg body weight of the human is administered per day. […]

Claim 1 of the main request before the Examining Division read as follows:

The use of arsenic trioxide for manufacturing a medicament for the treatment of acute myelogenous leukaemia by administering to a human a therapeutically effective amount of about 0.15 mg of arsenic trioxide per kg body weight of the human per day.

This claim was rejected for lack of novelty. The applicant filed an appeal and presented a new main request claim 1 of which read:

Arsenic trioxide for use in a method of treating acute myelogenous leukaemia in a human, wherein said treatment comprises administering about 0.15 mg of arsenic per kg per day to said human.

The Board finds this claim unallowable under A 123(2), for the following reasons:

Claims as originally filed as a source of original disclosure

[3.1.1] Claims 1 to 5 as originally filed relate to four different diseases to be treated by means of arsenic trioxide since claims 2 to 5 after claim 1 do not concern particular embodiments of the subject-matter of claim 1 but independent alternatives having equal weights without any preference, namely

− acute myelogenous leukaemia (claim 1)

− chronic myelogenous leukaemia (claim 2)

− solid cancer (claim 3)

− leukaemia resistant to treatment with retinoids (claim 5).

In addition, also claims 7 and 8 - both claims referring to claims 1,2,3,4, or 5 in unison - concern two independent alternatives, namely

− administration of about 2.5 to 4.5 mg of arsenic trioxide per day (claim 7) and

− administration of about 0.15 mg of arsenic trioxide per kg body weight of the human per day (claim 8).

[3.1.2] Claim 1 of the main request essentially relates to

− arsenic trioxide

− for treating acute myelogenous leukaemia by way of

− administering about 0.15 mg … per kg per day to said human.

[3.1.3] Nothing in the wording of the claims as originally filed links the regimen “administering about 0.15 mg … per kg per day” (original claim 8) specifically to the disease “acute myelogenous leukaemia” (original claim 1). Accordingly, the teaching of claim 1 of the main request cannot be regarded as individualised in the set of claims as originally filed.

The description as originally filed per se 

or in context with the claims 

as the source of the original disclosure

[3.2.1] There is no teaching in the description as originally filed that “acute myelogenous leukaemia” was the preferred disease or the preferred leukaemia to be treated.

[3.2.2] On page 20, lines 14 to 20 of the application as originally filed, the following statement can be found:

“An exemplary course of treatment of a patient with leukemia, lymphoma, or solid cancer can involve daily administration by intravenous infusion of arsenic trioxide in an aqueous solution …. Preferably, about 0.15 mg arsenic trioxide per kg body weight per day is used.”

This means at the utmost a clear and unambiguous disclosure that

− either leukaemia

− or lymphoma

− or solid cancer is to be treated by way of a dose regimen of

− 0.15 mg arsenic trioxide per kg body weight per day.

But the teaching that this dose regimen is linked to “acute myelogenous leukaemia” is missing and cannot be derived from claim 1 as originally filed either because that claim itself only represents one of four alternatives without any preference.

[3.2.3] Thus, there is no suggestion anywhere in the application as originally filed that the regimen “administering about 0.15 mg … per kg per day” relates specifically to the disease “acute myelogenous leukaemia”.

As a consequence, the teaching of claim 1 of the main request is not individualised in the application as originally filed and represents an unallowable extension of its content (A 123(2)).

In my opinion this decision went well “over the top.” The Board appears to suggest that by limiting the application to a combination of claims 1 and 8 as filed, the applicant has unduly singled out one of the treatments proposed in the application. I have some understanding for prohibiting singling out of alternatives within a claim, but to extend this prohibition to the application as a whole is simply “too much”.

To download the whole decision, you may click here.

NB: Laurent Teyssèdre was probably the first to report this decision; you can find his post here.

T 788/06 – Double Agents Are Troublesome

Claim 1 of the main request read:

A pharmaceutical composition in the form of a tablet, wherein said composition comprises, based on weight:

(a) from 20 to 70% irbesartan or a pharmaceutically acceptable salt thereof,

(b) from 1 to 70% diluent,

(c) from 2 to 20% binder,

(d) from 1 to 10% disintegrant,

(e) from 0.1% to 5% antiadherent,

(f) from 0.2 to 5% lubricant,

(g) from 0.2 to 6% surfactant,

wherein the surfactant is a poloxamer, wherein the tablet formed from said composition has a dissolution performance such that 80% or greater of the irbesartan or salt thereof contained in said tablet dissolves within 30 minutes.

[3.1] A 100(b) defines lack of the invention to be disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art as a ground for opposition. One of the provisions for the resulting requirements to be fulfilled is that the skilled person must be in a position to recognise whether or not the result of one of his reproductive experiments corresponds to the teaching of the patent in suit.

[3.2] In the present case, claim 1 in all the requests seeks protection for a pharmaceutical composition as a product per se.

The pharmaceutical composition is characterised by %ranges for the ingredients selected from at least five groups of substances:

(b) diluents,

(c) binders,

(d) disintegrants,

(e) antiadherents,

(f) lubricants,

The %ranges are essential technical features in the corresponding claims since they characterise the limits within which the sums of percentages of different ingredients (substances) selected from any of the groups must remain.

In order to enable the skilled person to produce an embodiment as subject-matter covered by such a claim, the groups and the %ranges for them in the product as claimed must be defined unequivocally.

[3.3] The groups from which the ingredients of a pharmaceutical composition are to be selected are characterised in terms of the functions that any ingredient should perform in the pharmaceutical composition and not in structural terms of chemical substances (main request and auxiliary request 1) or in structurally defined groups of substances with their function as additional remarks (auxiliary requests 2 and 3).

[3.3.1] In the description of the patent, it is set out that a single compound may perform two or more functions […].

In particular, from claim 4 of the main request and auxiliary request 1 and claim 1 of auxiliary requests 2 and 3 follows that alginic acid, sodium alginate, carboxymethylcellulose sodium, starch and pregelatinized starch may be binder or disintegrant.

Microcrystalline cellulose may be diluent or disintegrant.

Talc may be antiadherent or lubricant.

[3.3.2] If, under these circumstances, for instance, a pharmaceutical composition

− contains binder in an amount at the upper limit claimed for binder (20%) and

− the binder already contains starch

− and now a certain amount of additional starch is added,

there are two arbitrary ways of classifying this additional amount of starch:

− as a disintegrant or

− as further binder.

Depending on the outcome of that choice, the pharmaceutical composition resulting from the addition of starch is or is not contained in the claimed subject-matter.

If the additional starch is classified as a disintegrant and its percentage remains beneath the upper limit of the %range claimed for disintegrant materials, the pharmaceutical composition resulting from the addition must be regarded as subject-matter as claimed.

If, however, the additional starch is classified as binder, the claimed range of binder is exceeded and the resultant pharmaceutical composition constitutes subject-matter which is beyond the limits of the claim.

Thus, two totally different conclusions can be reached in answering the question whether the pharmaceutical composition is subject-matter as claimed or not, despite the material having the identical composition. These two conclusions, one being the complete opposite of the other, are simply the result of the fact that some of the ingredients of the pharmaceutical composition can be classified arbitrarily.

[3.3.3] The same effect is to be observed when the amount of ingredients of the different groups is changed slightly compared with the example mentioned above; for instance, it is not at all necessary to start with binder in an amount exactly equal to the upper limit as claimed. This special case has only been taken above for convenience and ease of explanation of the facts and effects.

[3.3.4] Thus, in quite a lot of cases, the skilled person trying to carry out the teaching of the claims, i.e. the claimed invention, does not know whether or not he will get a pharmaceutical composition as claimed, which amounts to the problem that he cannot carry out the teaching at all.

[3.3.5] The question of starch belonging to both the binder and the disintegrant groups applies to all of the main request and auxiliary requests 1 to 3. The same problem arises with the other functionally defined groups of ingredients as defined above under point [3.3.1] of this decision.

[3.4] To summarise, for the skilled person, with respect to the main request and auxiliary requests 1 to 3, there is no unequivocal definition in the patent in suit of the %ranges for binder and disintegrant, for diluent or disintegrant, or for antiadherent or lubricant in the pharmaceutical composition as claimed. Consequently, this feature leaves the actual subject-matter covered by the claim in doubt.

Therefore, in the board’s judgement, claim 4 according to the main request and auxiliary request 1 and claim 1 of the auxiliary requests 2 and 3 fail to meet the requirement of sufficient disclosure imposed by the ground for opposition under A 100(b). […]

[4] In addition, the further argument of the respondent cannot succeed: The skilled person may be able to recognise the primary function of an ingredient, but only in general terms when looking at a particular composition. A sound, clearly distinguishing correlation will not be possible for each and every percentage being claimed and for each and every environment as given by the percentages of the other ingredients. Moreover, even the wording “primary function” already indicates that there may be a doubt as to whether or not the secondary function would have to be taken into account or even if it would prevail in a particular case. Thus, the teaching with respect to the compositions as claimed supplies no clear and complete basis for carrying it out.

If you wish to download the whole decision, just click here.

T 765/07 – What Is Essential?

The case law has elaborated the so-called “essentiality test”, also referred to as “is it essential?” test, for evaluating whether the deletion of a feature from a claim is allowable in view of A 123(2). According to T 331/87, the replacement or removal of a feature from a claim may not be in breach of A 123(2) if the skilled person would directly and unambiguously recognise that (1) the feature was not explained as essential in the disclosure, (2) it was not, as such, indispensable for the function of the invention in the light of the technical problem it served to solve, and (3) the replacement or removal required no real modification of other features to compensate for the change.

[1.1] In accordance with A 76(1), “[a European divisional application] may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed”. In the present case the earlier application is the parent application […]. The established criterion, analogous to A 123(2), is that the subject-matter of a divisional application must be directly and unambiguously derivable from the parent application. This is the criterion adopted by the board in the present case.

[1.2] In the view of the board, the feature of claim 1 of the main request “wherein the spreading code generated by the spreading code generator is supplied to the delay circuit (319, 319’)” is not directly and unambiguously derivable from the parent application as filed. In accordance with this wording, the delay circuit could be placed anywhere on the output side of the generator, i.e. anywhere between the generator and antenna.

The appellant argues that the claim wording is supported by claims 19 and 21 as well as the passage at column 9, lines 6-10 of the published parent application. However, in all these passages it is explicitly mentioned that the signal from the delay circuit 319 is output to the multiplier/modulator 320 (see also Fig. 3), without there being any suggestion that an alternative position of the delay might be contemplated. Hence, claim 1 includes matter not directly and unambiguously disclosed in parent application as filed, contrary to A 76(1).

[1.3] In the oral proceedings the appellant argued that the skilled person would recognise that the location of the delay circuit between the code generator and the modulator was not an essential aspect of the invention and hence could be omitted from the claim in accordance with the “essentiality test” used in decision T 331/87. 

 In the letter of reply to the summons to oral proceedings, it was also apparently argued (albeit in respect of a different claim wording), with reference inter alia to decision T 1067/97, that the delay circuit and the modulator/multiplier 320 have no close functional or structural relationship, and that therefore it was allowable that the modulator/multiplier 320 be omitted from claim 1.

[1.4] However, as indicated above, the board considers that the correct criterion to apply is whether or not the claimed matter is directly and unambiguously derivable from the parent application as filed. As stated above, there is no basis in the parent application for any other position of the delay circuit.

Moreover, with regard to the appellant’s arguments, the board is not convinced that the location of the delay circuit between the code generator and the modulator should not be regarded as “essential”, as other locations of the delay circuit would have plausibly undesirable consequences such as adding delay to the data signal input to the modulator. Hence, the “essentiality test” is not applicable in the present case.

Furthermore, in the board’s view the case law exemplified by T 1067/97 does not apply to the present application since the code generator, the delay circuit, and the modulator clearly interact closely to provide a spread spectrum signal with the correct phase. They therefore have a close functional and structural relationship. Hence, the board finds the appellant’s arguments unconvincing.

[1.5] The board therefore concludes that claim 1 of the main request does not comply with A 76(1).

This case deals with rather complex subject-matter and it may well be that the Board was right in rejecting the deletion of the feature under consideration. However, I am not convinced that the argument used by the Board is satisfying. If I understand the Board correctly, it says that the feature should be considered as essential because its deletion would have undesirable consequences. I am not sure that this is what essentiality is about. I would think that a feature is essential if it is necessary for the solution of the objective technical problem. If the problem is still solved after deletion of the feature, even if other drawbacks appear, I would believe the feature not to be essential. Perhaps the Board considered condition (3) of T 331/87 and thought that the replacement or removal required a real modification of other features to compensate for the change in order to get rid of the above mentioned undesirable consequences? If so, I think the Board went beyond what T 331/87 had in mind: condition (3) stems from T 260/85 where the compensation clearly is related to solving the objective technical problem.

If you wish to read the whole decision, you may click here

NB: To read another post dedicated to the essentiality test, just click here. 

p.s.: I will be abroad for some time, without any certainty concerning Internet access. Therefore, I have to activate comment moderation. Sorry for the inconvenience.

T 1764/06 – Is It There?

Sometimes patent drafters - by choice or for necessity - resort to drafting claims containing somewhat exotic parameter features that are not known in the prior art. As a result, the Office is in a difficult position when it comes to assessing novelty and inventive step. Will the Office give the benefit of the doubt to the applicant? Not necessarily, as the present decision shows.

The application was refused by the Examining Division for lack of novelty. Claim 1 of the main request before the Board was amended with respect to the claims as filed, in particular by addition of a feature related to an index X:

1. A photocatalyst comprising a titanium oxide and a metal-containing compound other than titanium oxide on the surface of the titanium oxide, wherein the metal-containing compound is a metal oxide having an acid site, the photocatalyst has a BET specific surface area of 55 m2/g or larger, and the photocatalyst has an index X calculated by equation (I): X=B/A (I) of 0.2 or more, wherein A represents an integrated value of absorbance within a wavelength range of from 220 nm to 800 nm along an ultraviolet-visible diffuse reflection spectrum of the photocatalyst, and B represents an integrated value of absorbance within a wavelength range of from 400 nm to 800 nm along the ultraviolet-visible diffuse reflection spectrum.

Here is what the Board had to say:

[2.2.8] It follows from the above that D1 discloses a photocatalyst prepared according to a method as defined in claims 4 and 8 of the Main Request and comprising all the features of Claims 1 to 3 of the Main Request (supra) but the Index X.

[2.3] According to Claim 1, the photocatalyst has an index X of 0.2 or more, calculated by equation X = B/A (I), wherein A represents an integrated value of absorbance within a wavelength range of from 220 nm to 800 nm along an ultraviolet-visible diffuse reflection spectrum of the photocatalyst, and B represents an integrated value of absorbance within a wavelength range of from 400 nm to 800 nm along the ultravioletvisible diffuse reflection spectrum. Hence, the claimed photocatalyst also has a performance related characteristic expressed by a parameter feature.

[2.4] In their letter dated 23 March 2006 […], the applicants offered the following interpretation of Index X: “A” represented the amount of absorption of a broad wavelength range of light, including both the ultraviolet and the visible region; “B” represented the amount of absorption in the visible region of light; “Index X”, which was equal to “B/A”, therefore showed the proportion of ultraviolet-visible light that was absorbed in the visible region; the larger the Index X, the larger the proportion of light that was absorbed within the visible region; Index X thus related to the strength of the colour of the titanium oxide; when the titanium oxide was white Index X was about 0.1; the claimed photocatalyst had an Index X of more than 0.2, i.e. it absorbed enough light within the visible region and was not white.

[2.5] The Board notes that:

(a) None of the documents cited in the proceedings as representing the prior art ever mentions such an Index X. Not even D5 (Masakazu Anpo, “Photocatalysis on titanium oxide catalysts, Approaches in achieving highly efficient reactions and realizing the use of visible light”, Catalysis Surveys from Japan, 1(1997), pages 169-179), which concerns the use of visible light in the photocatalysis on titanium oxide catalysts, ever mentions Index X.

(b) No evidence whatsoever that “Index X” was common general knowledge in the field of photo-catalysis or had already been disclosed or used has ever been offered either.

(c) D7, alleged to represent the history of the development of visible light photo-catalysis, does not mention either any Index X.

(d) The characterization of the photocatalysts disclosed by D1 does not include the assessment of the colour. Nor does D2 or D6.

[2.6] Hence, the only expressed distinction between the definition of the claimed photocatalyst and the photocatalyst of D1 relies on a parameter feature that is not usual, let alone common, for the skilled person.

[2.7] Furthermore, if the significance of Index X given by the applicants were retained, i.e. that it is related to the strength of the colour of the titanium oxide, nothing of this would be found in the application as filed. Instead, from D1 […], it is learnt that an excess of iron, as in samples having more than 3% mol of iron, a fortiori the sample having 5% mol, produces, on the catalyst, surface layers and/or islands of inactive amorphous and/or crystalline material such as hematite. Hematite is generally known to be coloured, which fact must have an impact on the colour of the titanium oxide catalyst and on its capacity of absorbing visible light.

[2.8] Also, the method of preparation of the samples illustrated in D1 is as defined in Claims 4 and 8 of the Main Request, and as described in the paragraph bridging pages 4 and 5 of the application as filed. In particular, in D1, ammonia is added dropwise, hence until completion of the reaction. As regards the loading, the examples of the present application illustrate 3% mol of metal. Concerning Index X, the present application shows that also the comparative samples obtained by impregnation of commercially available titanium oxide (which have not been shown to have been produced by the alleged excess of ammonia) attain an Index of as high as 0.2 (Comparative Example 2), with a loading of 3% mol. Hence, no proven distinction appears to result from the method of preparation either, let alone from the alleged excess of ammonia, which further is not a feature required by any of the claims.

[2.9] Summing up, the applicants have not provided any items of evidence showing that the samples of D1, e.g. those having a high iron content, do not attain an Index X as required. However, the onus of the proof in that respect lay on them, and no proven distinction has ever been shown.

[2.10] Therefore, in these circumstances, the presumption that the claimed catalyst is not novel (as detailed throughout the examination and appeal proceedings), having regard to e.g. D1, has not been displaced by evidence.

2.11 Consequently, the condition required by A 52 (... provided that they are new ...) is not fulfilled by the catalysts defined in Claim 1, and a European patent cannot be granted on the Main Request.

[2.12] As regards the invoked “benefit of doubt”, to be accorded to the applicants in complex situations without direct disclosure, the position of the Board is as follows: in a situation where the applicants have used an unusual parameter feature to define their product, which unusual parameter feature represents the only distinction over otherwise identical known products, and the applicants have decided not to provide evidence that the parameter feature as such represents a difference of the claimed products from the known products, no benefit of doubt can be accorded. A 52 requires that the invention (here, the claimed photocatalyst) be novel.

[2.13] The above objections extend to the subject-matter defined in Claims 2 and 3 as well as to the method of preparation as defined in Claims 4 and 8.

[2.14] Therefore, the Main Request is not acceptable.

If you wish to download the whole decision, please click here.

To read a previous post on a similar decision, click here.

T 1482/09 – Shootin’ From The Hip

The present decision is a useful reminder that Board of appeal decisions can be very quick, in particular in ex parte proceedings where no oral proceedings (OPs) have been requested.

[1.1] The examining division (ED) in its decision explained why in its opinion the subject-matter of claim 1 lacks an inventive step.

[1.2] In its grounds of appeal the appellant explained why it disagreed with that decision. The appellant did not file any new request. It is therefore the task of the Board to decide whether it is convinced by the arguments of the appellant that the decision was wrong.

[1.3] In accordance with Article 12(1)(a) Rules of Procedure of the Boards of Appeal (RPBA) the appeal proceedings is based on the notice of appeal and the grounds of appeal. Paragraphs (b) and (c) of that article do not apply in the present case as there is only one party and the Board has not issued a communication.

[1.4] In accordance with Article 12(3) RPBA the Board may decide the case in proceedings with only one party at any time after the statement of grounds has been filed, subject to A 113 and A 116. No request for OPs under A 116 has been made by the appellant. With regard to A 113 the present decision is based on the set of claims filed by the appellant with letter of 19 June 2008 during the first appeal proceedings. The impugned decision of the ED was also based on this set of claims. No amendments have been filed in the present appeal proceedings and the appellant expressly requested in its notice of appeal dated 29 June 2009 that a patent be granted on the basis of this set of claims. The present decision is also based on grounds and evidence on which the appellant has had a chance to comment. No new documents or grounds have been cited during the present appeal proceedings and only the reasoning of the examining division and the appellant have been considered, as will become apparent below.

[1.5] The Board concludes therefore that it may take the present decision without recourse to a preceding communication to the appellant.

As the claims on file were found to lack an inventive step, the appeal was finally dismissed.

Overall duration of the appeal proceedings: less than 11 months.

Of course, if the appellant had requested OPs in its notice of appeal, the Board would have been obliged to grant this request, which would have given the appellant one last opportunity to persuade the Board.

To read the whole decision, you may click here.

T 1791/08 – Complete Search Presumed

[1] As apparent from the minutes of the oral proceedings, after the discussion on the inventive step of the first embodiment of claim 1 (polystyrene) had taken place and the board had signalled a positive finding, the [opponent] requested that the request not be admitted into the proceedings, insofar the method of claim 1 involved the use of a container made or coated with polyethylene terephthalate, the reason put forward for this procedural request being that said embodiment had not been specifically searched.

[2] Indeed a claim directed specifically to such an embodiment had never been submitted until the main request was filed on 11 February 2010.

Nevertheless, claim 1 as filed, on the basis of which the search was carried out, with the general expression “a material inhibiting the activation of a substance degrading the peptides”, when read in the light of the description […], included inter alia polyethylene terephthalate as one of the preferred materials. Thus, it can be reasonably presumed that the search was complete.

To read the whole decision, please click here.

T 1349/08 – No Partying Here

The recent referral to the Enlarged Board of appeal (EBA) pending as G 1/10 has drawn some attention to the difficulties that may arise when the Examining Division (ED) acts under R 140 during opposition proceedings. The present decision is an interesting complement because it shows an opponent desperately trying to reverse a decision of the ED taken during the opposition period.

The decision to grant the opposed patent was published in the Bulletin on March 20, 2002. A decision to correct the decision to grant under R 89 EPC 1973 was taken on July 5, 2002. The decision to correct was not published in the Register. The patent was then opposed on December 20, 2002. In a letter to the ED, the opponent requested that the original decision to grant the patent be reinstated. The ED issued a ‘decision’ dated May 20, 2008, holding that the opponent, not being a party to the examining proceedings, was not entitled to request reinstatement of the first decision to grant. The present appeal is directed against this decision.

Party status of [the opponent]

[2.1] The ED, in a decision dated 5 July 2002, corrected the decision to grant a European patent issued on 7 February 2002 pursuant to R 89 EPC 1973. On a request of the [opponent], the ED, in a “decision” dated 20 May 2008, decided that the [opponent] was not a party to examination proceedings and was thus not entitled to request reinstatement of the original decision to grant and all its requests were thus rejected as inadmissible.

[2.2] The object underlying this dispute is the request of the [opponent] to the ED to cancel its decision to correct the decision to grant and to reinstate its original decision to grant. Thus the present dispute lies within the framework of examination proceedings, the [opponent’s] request being directed to the ED and the “decision” under appeal dated 20 May 2008 being issued by the ED. The question arises, whether the [opponent], being neither the applicant nor the patentee, could nevertheless become a party to the examination proceedings.

[2.3] The correction of the decision to grant a European patent as well as the decision refusing the [opponent’s] request to withdraw said decision to correct and to reinstate the original decision to grant underlying the present dispute belongs to the examination proceedings pertaining to said European patent and have been taken by the competent ED. Examination proceedings are ex parte proceedings between the EPO and the applicant/patentee (see A 60(3) and A 94(3)). Analogous to A 115, which stipulates that a person submitting observations concerning the patentability of an invention shall not be party to the proceedings before the EPO, a person contesting the allowability of a correction of a decision to grant a European patent under R 140 EPC 2000 and requesting reinstatement of the original decision to grant, cannot thereby become a party to the proceedings. The [opponent], being neither the applicant nor the patentee, thus cannot be party to the examination proceedings. Therefore the [opponent], not being party to the examination proceedings, has no party status in the present examination proceedings. This was the conclusion of the ED in its “decision” of 20 May 2008 and the Board shares this view. Consequently, irrespective of whether or not the [opponent] is adversely affected by said “decision”, it cannot acquire the quality of party status to the examination proceedings.

[2.4] Therefore, the appeal is to be dismissed.

[2.5] For the following reasons, the Board is not convinced by the [opponent’s] submissions as to why it should indeed be regarded as a party to the examination proceedings.

[2.5.1] The [opponent] submitted that it was at least a party to the opposition proceedings concerning the patent in suit, that these opposition proceedings were affected by the “decision” of the ED dated 20 May 2008 not to reinstate the decision to grant dated 7 February 2002, and the [opponent] was adversely affected thereby in these opposition proceedings. However, the party status of an opponent in opposition proceedings cannot be transferred to examination proceedings, opposition proceedings and examination proceedings being separate proceedings (see T 198/88 [2.1]). Whether the opposition proceedings are affected or not by a decision issued in the course of examination proceedings is irrelevant to the matter of whether the [opponent], who is opponent in opposition proceedings, may acquire party status in the examination proceedings in view of the separate nature of these proceedings. The submission that the [opponent] might be adversely affected by the “decision” of the ED dated 20 May 2008 may give the [opponent] an interest to act, but is irrelevant to the legal question of party status, an interest to act not in itself conferring party status in proceedings to which the [opponent] was not a party.

[2.5.2] The [opponent] further argued that in the particular circumstances of this case it was indeed party to the examination proceedings because the Opposition Division (OD), by virtue of its decision of 17 September 2004 cancelling the date for oral proceedings already fixed and indicating that a new date would be fixed after the requested decision of the ED had become final, had thereby recognised that the ED should address the [opponent’s] request for an appealable decision by the ED regarding the decision to correct the decision to grant dated 5 July 2002, the [opponent] hereby acquiring party status. However, irrespective of whether or not the communication of the OD dated 17 September 2004 bore all the characteristics necessary for qualifying as a decision and, thus, could in fact constitute a decision, and whether or not the OD indeed had the power to refer the case back to the ED, examination proceedings are ex parte proceedings (see point [2.3] above) which are separate from opposition proceedings (see point [2.5.1] above) which by nature are inter partes proceedings. As such, no action of the OD could confer party status to an opponent in examination proceedings on the same case, it indeed being questionable whether or not opposition and examination proceedings may coexist for the same application/patent.

[2.5.3] The [opponent] further submitted that correction of a decision to grant a European patent did not form part of the examination proceedings but was an isolated procedural measure, citing J 27/96 [3.2] in this respect, thus the [opponent] was entitled to be party to this isolated procedural measure. However, decision J 27/96 is concerned with R 88 EPC 1973 (R 139 EPC 2000), which applies to corrections of errors in documents filed before the EPO, whereas the [opponent] is objecting to a decision concerning a correction under R 140 EPC 2000 (R 89 EPC 1973), which applies to decisions of deciding bodies of the EPO. In any case, the [opponent] cannot be party to an isolated procedural measure, but only to proceedings as a whole, the decision J 27/96 merely stating that the applicant which requested a correction of a mistake in documents was not thereby reinstated in a particular procedural phase which would thereby have made said whole procedural phase available to him again. Thus, the decision J 27/96 is not relevant to the present case, the correction of a decision to grant a European patent being within the scope of examination proceedings.

[2.5.4] The [opponent] cited A 125, stating that if the EPO were to take into account the principles of procedural law generally recognised in the Contracting States, the [opponent] would become a party to the examination proceedings. However, the Board notes that A 125 provides for taking such principles into account only in the absence of procedural provisions in the EPC. This Article thus does not refer to the absence of a procedure but only to the absence of procedural provisions. Since there is no procedure in the EPC for creating party status for a third party in examination proceedings, indeed on the contrary, it is specifically provided for in A 115 that a third party shall not be party to the proceedings before the EPO (see point [2.3] above), there can be no absence of procedural provisions. In any case, the [opponent] did not substantiate its argument and did not provide corroborating evidence that in the majority of, or in any particular Contracting States, there existed some modus for creating party status for a third party in examination proceedings on patent applications. Thus regardless of whether procedural provisions are absent in the EPC, the absence of such provisions being a prerequisite for the application of A 125, the Board concludes that in the absence of any evidence of relevant procedural principles from the Contracting States, said Article cannot serve as a basis for creating a special legal remedy making it possible for a third party to attain party status in examination proceedings (see G 1/97 [3]).

[2.5.5] The [opponent] submitted that its legitimate expectations had not been protected, the published text of the patent it had opposed, namely European patent No. 952 132, having been amended post-grant in an unallowable manner, the [opponent] being adversely affected thereby as it was now prevented from challenging the post-grant amendment in opposition proceedings under A 123(3). However, any legitimate expectations the [opponent] may have resulting from the publication of the decision to grant of European patent No. 952 132 may be relevant only to the opposition proceedings pending on this case (see point [5.3] below) to which the [opponent] would appear to be a party, namely in its quality as opponent. Regardless of whether or not the [opponent] has any legitimate expectations in the examination proceedings, legitimate expectations are not in themselves a ground for generating party status to the present examination proceedings, just as they would not be for any other member of the public, which may also have legitimate expectations in examination proceedings.

[3] Since the [opponent] has no party status in these examination proceedings, the appeal is not allowable, party status being a prerequisite for the Board to allow any of the [opponent’s] main, first and second auxiliary requests.

Referral to the EBA

[4.1] According to A 112(1)(a), a referral to the EBA is only admissible if a decision is required in order to ensure uniform application of the law or if an important point of law arises. The answer to the referred question should not be merely of theoretical or general interest, but has to be decisive, i.e. essential, to reach a decision on the appeal in question (see, for example, G 3/98 [1.2.3]).

[4.2] The question put forward by the [opponent] concerns the issue of whether an opponent could be an adversely affected party to proceedings relating to correction of a decision to grant under R 140 EPC 2000 (or R 89 EPC 1973). Since, however, the decision for correction itself dated 5 July 2002 is not the decision under appeal in the present proceedings, but rather the “decision” of 20 May 2008 concerning the reinstatement of the original decision to grant, the answer to the proposed question cannot be decisive in the present case.

[4.3] The issue addressed in the proposed question thus being merely of theoretical nature, any answer of the EBA to that question is irrelevant for deciding on the present appeal, and hence the request for referral of the question must be refused.

[5] The following comments of the Board do not form part of the ratio decidendi of this decision. However, in view of the unusual nature of this case, inter alia the following points may need attention when the opposition proceedings pending on this case resume.

[5.1] Under A 99(1) and A 101(1), the OD shall examine whether or not at least one ground for opposition prejudices the maintenance of the European patent. Thus the OD should identify the subject-matter of the patent which forms the basis of the opposition proceedings in order to determine the object of the legal dispute, this being the competence and duty of every deciding body.

[5.2] Thus it appears that the subject-matter of the opposed patent should be determined. This is usually the subject-matter as defined in the published granted patent. If, as in the present case, an amendment has been carried out after mention of grant of the European patent in the Bulletin, then the deciding body, in this case the OD, may need to decide whether or not this amendment may further define the subject-matter of the opposed patent to be decided upon in opposition proceedings under A 101. 

[5.3] When deciding on whether the amendment should be taken into account, the OD may need to consider whether or not the amendment carried out after publication of the decision to grant in the Bulletin (see A 97(4)) has any effect, particularly in view of any “cut-off” effect of said publication (see T 777/97 [3, last paragraph] and J 42/92 [5,6]) due to the jurisdiction passing to the Contracting States from this date (see A 64(1)).

The question thus may arise whether or not the ED had the competence to act after this date due to an exhaustion of its competence ratione materiae as well as ratione legis. Furthermore, the interests of the public in respect of legal certainty may also have to be taken into account (see G 1/97 [3(c)] and T 713/02 [2.2.6]), the date of publication of the decision to grant in the Bulletin being the starting date for the nine month period in which opposition may be filed (A 99(1)).

[5.4] If an amendment has been allegedly carried out under R 140 EPC 2000, the OD may need to determine whether or not said amendment was in fact a genuine correction under R 140 (see T 1093/05 [7] and T 850/95 [headnote I]). The OD may indeed not have the right to verify the substance of a correction under R 140 (see T 79/07 [3 to 23]), but, in view of the discretionary nature of the decision to correct, it may have the competence and duty to verify whether the proper criteria were applied in determining whether the correction made did indeed qualify as a correction pursuant to R 140, or whether the use of R 140 as a legal basis was unjustified, e.g. the ED, under R 140, had in fact reopened examination proceedings.

To download the whole decision, you may click here.

T 232/08 – Too Late

If, when preparing oral proceedings (OPs) in an opposition appeal case, you realize that a document you used in an inventive step argument (but which you did not use in your - first instance - novelty attacks) is in fact destructive of novelty, are there any chances of having the novelty argument examined in the OPs? Well, it always depends on the Board, but chances are not good, as illustrated by the present decision.

[2] In accordance with Article 12(2) of the Rules of Procedure of the Boards of appeal (RPBA) “the statement of grounds of appeal and the reply shall contain a party’s complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld and should specify expressly all the facts, arguments and evidence relied on”.

[3] Article 13(1) RPBA leaves it to the discretion of the board to admit amendments to a party’s case after it has filed its grounds of appeal or reply. Aspects to be looked at when exercising the discretion are according to Article 13(1) RPBA inter alia the complexity of the new subject-matter, the current state of the proceedings and the need for procedural economy.

[4] However, a stricter criterion is applied to amendments sought to be made after OPs have been arranged. According to Article 13(3) RPBA these amendments “shall not be admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the OPs.” Thus, the parties’ right to be heard and/or procedural economy take precedence over other considerations.

[5] The objection of lack of novelty based on document D11 was raised for the first time during the whole opposition and appeal proceedings at the OPs before the board.

[6] Although lack of novelty was mentioned as a ground of opposition and was dealt with in the decision under appeal, it was not relied on at all in the statement of the grounds of appeal. Furthermore, document D11 was only introduced during the appeal proceedings and then only in the context of inventive step and even then only as evidence of common general knowledge of particle size […]. Thus, in the board’s view, the [patent proprietor] had every reason to believe that novelty was no longer pursued as a ground of opposition in the appeal and that document D11 formed only a limited part of the [opponent’s] case on inventive step.

[7] Moreover, in the board’s view the disclosure in document D11 of possibly novelty-destroying subject-matter is not particularly striking. This view is supported by certain of the [opponent’s] submissions: although the summary of the teaching in document D11 submitted with the statement of the grounds of appeal […] mentions hyaluronic acid, spray-drying and a particle size range falling under the one mentioned in claim 1, the document is only cited in the context of inventive step. Further, the [opponent] conceded at the OPs that the novelty-destroying character of the disclosure in document D11 only occurred to it during preparation for OPs. Therefore, in the board’s view, it cannot be expected that the [patent proprietor] would have foreseen the objection of lack of novelty on the basis of document D11 itself.

[8] In all the circumstances of the present case, the board considers that the [patent proprietor’s] right to be heard with regard to the novelty-objection based on document D11 would have been respected only if the OPs had been adjourned or the case had been remitted to the department of first instance in order to allow the [patent proprietor] adequate consideration of the [opponent’s] objection.

Consequently, applying Article 13(3) RPBA, the board has decided not to allow the [opponent] to present its novelty objection based on document D11.

If you wish to download the whole decision, please click here.

T 1560/05 – The Skilled Person Reads Magazines

In the present case, the patent proprietor, whose patent had been revoked by the Opposition Division, argued that there was no technical teaching in document E3, a review article published in a professional magazine (“Funkschau”). Citing decision T 172/03, the proprietor asserted that E3 could not be used as a starting point for assessing inventive step.

In T 172/03 the patent proprietor complained that the Examining Division had rejected its application based on some fictitious prior art. The Board came to the following conclusion:

… It can hardly be assumed that the EPC envisaged the notional person skilled in the (technological) art to take notice of everything, in all fields of human culture and regardless of its informational character. A consistent construction of the patentability provisions requires the term “everything” in A 54(2) to be understood as concerning such kind of information which is relevant to some field of technology.

From these considerations it follows that anything which is not related to any technological field or field from which, because of its informational character, a skilled person would expect to derive any technically relevant information, does not belong to the state of the art to be considered in the context of A 54 and A 56, even if it had been made available to the general public before the relevant priority date.

However, in the present case, the Board does not find T 172/03 to be applicable:

[3.3] E3 reviews cable television networks in the USA before the priority date. In the board’s view, the skilled person would derive technically relevant information from such a review, such as information on the different kinds of television programs transmitted in the USA and on the (interactive) services offered for subscription or purchase using, for instance, a back channel. Thus the circumstances differ from those referred to in case T 172/03 [10].

Consequently the board does not accept the appellant’s argument that there is no technical teaching in E3.

In the judgement of the board E3 is comprised in the state of the art as defined in A 54(2).

To read the whole decision, please click here.

T 714/08 – Harsh As Harsh Can Be

This is another example for the very severe application of A 123(2) by the Boards.

Claim 1 as granted was directed at a hair dyeing composition comprising at least one first oxidation base chosen from two compounds and their salts, at least one coupler chosen among some particular derivatives having a generic formula (I) and at least one second oxidation base chosen among some particular derivatives having a generic formula (II).

Claim 3 as granted gave a list of twelve derivatives of formula (I).

The opposition division revoked the patent for lack of inventive step.

The main request filed before the Board corresponds to a combination of claims 1 and 3 and the deletion of one of the alternatives for the first oxidation base. The figure (click to enlarge) gives a comparison of claim 1 of the main request and a combination of claims 1 and 3 as granted:

** Translation from the French **

[3.1] Claim 1 of the main request has been amended by limiting the first oxidation base to para-phenylenediamine and its salts and the list of couplers to 12 specific individual compounds and their salts.

[3.2] When assessing whether an amendment complies with the requirements of A 123(2) it is necessary to establish whether it introduces technical information which the skilled person would not have deduced directly from the patent application as filed (see T 288/92 [3.1] and T 680/93 [2])

It is undisputed that the application as filed cites (prévoit) para-phenylenediamine among others as first oxidation base and the twelve individual compounds listed in claim 1 as amended (see claims 1 and 3 of the application as filed) among others as couplers.

However, by limiting the first oxidation base to para-phenylenediamine and its salts alone and the couplers to twelve specific individual compounds and their salts, claim 1 as amended individualises twelve base-coupler combinations, for instance the combination of para-phenylenediamine and 2,4-diamino-1-ethoxybenzene or [the combination] of para-phenylenediamine and 2 amino-1-(β-hydroxyethyloxy)-4-methylaminobenzene. However, these specific couples are not disclosed in the application as filed which provides that the composition comprises at least one first oxidation base chosen from para-phenylenediamine and 2-methyl-para-phenylenediamine (claim 1) but does not define which particular base is combined with which particular coupler. Thus the specific combination of para-phenylenediamine with each of the twelve couplers of claim 1 as amended cannot be deduced directly and unambiguously from the patent application as filed.

[3.4] According to the [patent proprietor] para-phenylenediamine is already individualised as preferential first oxidation base in the patent application as filed on page 14, lines 8 to 11. Therefore, its combination with each of the twelve specific couplers as required by claim 1 as amended was already foreseen in the application as filed. Thus claim 1 as amended did not extend the subject-matter of the patent beyond the content of the application as filed. However, the passage on page 14 to which the [patent proprietor] refers is limited exclusively to the particular example 6 which associates para-phenylenediamine and 2,4 diamino1 (β hydroxyethyloxy)benzene dihydrochloride and thus cannot be interpreted as a general teaching limiting the first oxidation base to para-phenylenediamine and associating it with each of the twelve specific couplers according to claim 1 as amended. Therefore, this argument has to be dismissed.

Moreover, the case differs from the cases where limitations have been carried out in chemical formulas of the Markush type as in decisions T 615/95 and T 50/70. As a matter of fact, in those cases the limitation does not result from the individualisation of particular combinations as in the present case, but conserve the generic nature of the chemical formula defining the claimed products (T 615/95 [6] and T 50/70 [2.1, 3rd paragraph]).

[3.5] Consequently, the amendment of claim 1 according to the main request extends the subject-matter of the patent beyond the content of the application as filed and, therefore, does not comply with the requirements of A 123(2). As a consequence, the request has to be dismissed.

I guess many of us will have to change their drafting techniques in view of this severe application of A 123(2). I plan to deal with this question after we have seen some more recent A 123(2) decisions.

If interested in Markush claims, you might also have a look at another recent post.

To read the whole decision (in French), you may click here.

T 847/07 – Try And See?

Claim 1 of the patent as granted (and of the main request) read as follows:

1. A pharmaceutical formulation suitable for subcutaneous, intramuscular or intradermal administration, comprising highly purified recombinant coagulation factor VIII in a concentration of at least 1000 IU/ml.

The claim having been found to lack novelty, an amended claim 1 was filed during oral proceedings before the Board:

1. A pharmaceutical formulation which has a volume of 0.1 to 2 ml and is suitable for subcutaneous, intramuscular or intradermal administration, comprising highly purified recombinant coagulation factor VIII in a concentration of at least 1000 IU/ml.

This amendment provided novelty over prior art disclosing an intravenous administration of the coagulation factor. The following is an extract from the discussion of inventive step:

[68] The board has considered whether or not the skilled person faced with the disclosure in document D8 would be in a “try and see” situation.

The board in decision T 1599/06 [20.2] comes to the conclusion that the “try and see” approach has been applied in the assessment of inventive step in situations where, in view of the prior art, the skilled person had clearly envisaged a group of compounds or a compound and then could determine by routine tests whether or not such compound(s) had the desired effect.

[69] It follows however from the observations above that highly purified factor VIII had not been identified as a candidate for an administration route other than the intravenous one, i.e. it was never envisaged for injection volumes in the range of 0.1 to 2 ml.

Consequently, applying the rationale of the decisions which have used the “try and see” approach as summarised by the board in decision T 1599/06, the board concludes that in the present case the skilled person is not in a “try and see” situation in the light of the disclosure in document D8.

[70] Finally, in the board’s view, it is questionable whether the skilled person would adopt a “try and see” attitude at all in cases such as the present one where extensive in vivo animal and ultimately human testing would be necessary in order to determine whether or not a compound has a certain property.

To read the whole decision, please click here.

T 800/08 – Follow The Guide

It has been decided that an Examining Division (ED) does not commit a substantial procedural violation when it fails to follow the Guidelines, unless it also violates a rule or principle of procedure governed by the EPC or one of the implementing regulations (T 42/84 [9]; T 647/93 [4.1]): the failure of a department of the EPO to follow a procedure set out in the Guidelines does not qualify as a substantial procedural violation as the Guidelines are not legally binding (J 24/96 [4]). But what if the ED does follow the Guidelines and ignores a clear decision of a Board of appeal?

[2.1] The applicant argues that since the omitted feature - the struts - is clearly presented as optional in the previous applications, the three conditions set out in T 331/87 should not be applied to the present case and that therefore, obviously, this feature could be removed from the claim without contravening the requirements of A 76(1).

Both the parent […] and the grandparent application […] specify that one of the objects of the invention is to provide panels “which may have struts”. This wording clearly indicates that the presence of the struts is not compulsory and hence optional. Therefore, the removal of this feature from the independent claim is not subject to the conditions set out in T 331/87.

It follows that since the removed feature was described as being optional in both the parent and the grandparent applications, it can be taken away from the independent claim of the divisional application without extending its subject-matter beyond the content of either of the previous applications as filed and hence without contravening the requirements of A 76(1). Even if a specific strength of the panel has to be maintained while optimising the quantity of foam to be used […], this object is not necessarily to be associated with the presence of struts but can be achieved by other means fully compatible with the invention as claimed.

Refund of appeal fee

[3] According to R 103(1)(a), the appeal fee shall be reimbursed where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

In the present case the appellant argued that the ED committed a substantial procedural violation since it refused to take into consideration decision T 331/87.

However, the ED is not bound by any decision of the Technical Boards of Appeal apart from the one concerning the specific case under appeal (see A 111(2)). Since EDs have to follow the instructions of the Guidelines, they were correct in using the conditions as set out therein.

Therefore, since this conduct does not imply any procedural violation, there is no reason to refund the appeal fee.

To download the whole decision, please click here.

T 893/07 – Remittal? No Way

[3.1] The appellant’s representative reminded the Board that the summons to attend oral proceedings (OPs) before the examining division (ED) had been issued after a single communication of the ED and that, as a consequence, the appellant/applicant had had only limited opportunities to defend his case before the first instance department.

She further emphasized that the current request remedied all objections relied upon by the ED in its refusal and that the jurisprudence of the boards of appeal implied, in such situations, that the case be remitted back to the ED in order to ensure that the applicant had the benefit of two instances. In support of this view, reference was made inter alia to decisions of the boards of appeal T 180/95, T 47/90 and T 139/87.

Finally, the appellant stressed that the document reflecting the closest prior art had been introduced ex officio by the Board of appeal for the first time into the proceedings in the annex to the summons to attend OPs before the Board.

In conclusion, the appellant’s representative held that the balance between conflicting principles such as, on the one hand, the right of the appellant to be heard and, on the other hand, the right of the public to have a fair knowledge of the rights resulting from a patent application within a reasonable period of time was on the side of the appellant.

[3.2] The argument based on the fact that the ED issued just one communication before it summoned to OPs and thus deprived the applicant from further opportunities to defend its case is not convincing. Apart from the fact that the course of action followed by the ED is in line with common examination proceedings, it is noted that the applicant even did not seize the opportunity to defend its position before the ED and withdrew its request for OPs one month before they took place. As a consequence, OPs were held in the absence of the applicant.

The Board further observes that document D3 is a family member of a document cited in parallel proceedings before the US Patent Office and that its content was thus known to the appellant. In this context, the appellant could not be considered unprepared to the introduction of D3 into the appeal proceedings.

Furthermore, the Board notes that, contrary to the view defended by the appellant, the jurisprudence of the boards of appeal is not unanimous when deciding on the possible remittal of a case to the department of first instance. As for instance stressed in decision T 111/98, remittal depends on the circumstances of the case. In particular,

“Amendment of the claims in response to the citation of a new document during appeal proceedings is not as such a sufficient reason to remit the case to the department of first instance” (cf. T 111/98 [headnote; 1.2]).

In view of this decision, what actually appears to be essential when a board exercises its discretion to remit a case is whether the factual framework has substantially changed during the appeal proceedings.

In the Board’s judgement, the introduction of D3 into the present appeal proceedings does not, however, amount to a substantial change in the factual framework. As may be derived from the file wrapper, the problem-solution analysis carried out by the Board starting from document D3 is quite similar to the analysis made by the ED when starting from document D1. In particular, the distinguishing feature of the claimed invention still resides in the sole feature of the controller being adapted to variably control the reactance value. Similarly, the objective problem to be solved is still considered to be the desire to improve the degree of freedom in the control of the antenna configuration in order to control the antenna device, as established by the ED in its decision with regard to former dependent claim 5.

[3.3] The position of the ED with regard to current claim 1 can thus be reasonably estimated from the previous proceedings before the ED as may be appreciated from the file wrapper. A remittal to the ED would therefore appear to be a purely formalistic act and contrary to the principle of procedural economy. For these reasons, the request that the case be remitted to the ED for further prosecution is rejected.

To read the whole decision, click here.

T 683/06 – No Second Date

Reality sometimes definitely has a “paper D” flavour …

At the beginning of this story there is a late night fax transmission at the very end of the priority year. Some of the parts of the application (pages 1 and 2 of the description, claims 1 to 47 and Figures 1 to 3) were received at the EPO before midnight, i.e. on June 14, 1995, some only after midnight (pages 3 to 16 of the description), i.e. on June 15. The EPO followed its internal instructions and asked the applicant to choose between (1) keeping only the parts filed before midnight, which allowed to have June 14 as date of filing and to keep the first priority claim, and (2) keep the whole document and have June 15 as date of filing, thereby losing the first priority claim. The applicant chose solution (1). Later it filed a divisional application based on parts of the first application which had been received after midnight. The EPO refused this application because it went beyond the content of the parent application. The present appeal deals with this decision. The applicant requested that the date of filing of the parent application be fixed to June 15 (correction under R 139).

** Translation from the German **

[2] The main request of the appellant aims at obtaining that June 15, 1995, be acknowledged as date of filing of the parent application. If this was done, all the documents filed by fax at that time would have to be taken into account and the divisional application would have support in the application as filed.

[2.1] The EPC does not provide the possibility of an ex post shift of a date of filing after it has been fixed. Only R 56 makes it possible to shift a date of filing to later dates when missing drawings or parts of the description are filed at a later date.

Moreover, a correction of errors in documents filed with the EPO pursuant R 139 can also lead to a correction of the date of filing. However, the present case does not concern such a correction. What is aimed at here is not to correct an erroneous indication of the date of filing of the parent application in the application documents. Rather the date of filing of the parent application is to be changed. Therefore, R 139 cannot serve as legal basis for fixing anew the date of filing, all the more as the provision cannot be applied any more after the grant proceedings have been terminated.

Even a correction under R 140, which is available for linguistic errors, errors of transcription and obvious mistakes in decisions of the EPO, is out of the question. The indication of June 14, 1995 as date of filing in the corresponding documents of the Office is, as the case history clearly shows, not an error or an obvious mistake at all, but is the result of a decision-making process. Therefore, it cannot be corrected in this way even if the result of this decision-making process were wrong.

[2.2] The Board does not share the view of the appellant according to which there was no need for a legal basis for fixing anew a date of filing because the fixing of the date of filing was only binding on the Office and interests of the public were not concerned. Quite to the contrary, the date of filing is of central importance in the patent system as a whole and has numerous effects on the concrete grant proceedings including remote effects in possible divisional applications. The present proceedings in particular show the importance of the date of filing.

Therefore, the Board does not see itself in a position to fix anew the date of filing in the terminated proceedings concerning the parent application.

[2.4] Finally it has to be pointed out that the regulations concerning applications by fax which are received partly before and partly after midnight (mitternachtsüberschreitend) as stipulated under point [5.1] of the Communication of the EPO dated June 2, 1992 [OJ 1992, 309], are applicable to the present case. It is not clear why this regulation should not be applicable in a case where the application contains two inventions (assuming that the present case is such a case). Moreover, it is to be noted that this regulation does not offer the applicant the possibility to determine the date of filing in a subjective manner, but only to choose between two objectively conceivable options, in the exercise of legitimate interests (interessensgerecht).

[3] In its first auxiliary request the appellant wishes to obtain that the Board, with regard to the present proceedings, act on the assumption […] that all the documents had been received on June 14, 1995, because the contrary cannot be asserted.

[3.1] As far as divisional applications are concerned, is questionable whether it is possible to assume a different date for the receipt of the documents of the parent application than the date which the parent application has received as date of filing. But even assuming that this was in principle “virtually” possible for the date of receipt of the application documents, this assumption cannot lead to fixing the date of receipt of the documents to June 14, 1995.

[3.2] In its internal note dated June 19, 1995, the Receiving section has listed which parts of the documents of the parent application had been received on June 14, 1995 (all except pages 3 to 16 of the description) and which parts had only been received after midnight, on June 15, 1995. The applicant has been informed accordingly, e.g. in the letter dated August 3, 1995. Even if those facts are challenged, the Board will use them as basis for its decisions because they have been established by the Office, unless there are justified doubts as to their correctness or other circumstances which could be suitable for calling them into question.

[3.3] In the present case, there are indeed such circumstances. As a matter of fact, the corresponding pages of the electronic file of the Office do not contain any impressions of a fax machine documenting the date and time of receipt in the EPO, i.e. of the receiving fax machine. However, the emission data (Sendevermerke) of the office of the representative who represented the party at that time can be seen.

[3.4] The file of the parent application has been scanned at a later time (“backscanning”). It cannot be determined from the electronic file whether the reception data (Empfangsvermerke) of the fax of the EPO are only invisible on the individual pages of the electronic file or if they are indeed missing. On the other hand, it is conspicuous that the assignment of the documents to the two dates (June 14 and 15, 1995), as made by the Board, corresponds exactly to the times that appear on the emission data.

[3.5] Therefore, it appears to be likely that at that time the Receiving section – for what reasons ever – has carried out the chronological assignment of the documents on the basis of the emission data of the fax machine of the attorney’s private practice. However, this can hardly be adequate for a sufficiently safe assignment. If the question of the precise [moment of] receipt were decisive, it would be necessary to accede to the appellant’s motion to take evidence by consulting the original file and to pursue the investigations.

[4] However, the Board is of the opinion that the question as to when precisely the individual documents were received is not decisive. As a matter of fact, the applicant, in a letter dated November 6, 1995, has explicitly and unambiguously defined the object of the grant proceedings.

[4.1] In its letter dated August 3, 1995, the Receiving section has exposed in detail, to the representative who represented the applicant at that time, which variants corresponded to which documents and has asked for information on which date of filing was to be fixed and which claims were to be searched. The representative has responded in a letter dated November 6, 1995, that the search was to be carried out on the basis of the documents that had been received before midnight on June 14, 1995.

[4.2] This statement is unambiguous and has been made in full awareness of the relevant facts. It means that the date of filing is fixed to June 14, 1995, and cannot reasonably be understood in another way. At the same time, in view of the Communication of the EPO dated June 2, 1992, it means that the other documents have been abandoned. The then representative must have been aware of this fact. The appellant has to stick to that declaration even today. This means that the pages 3 to 16 of the then received pages of the description are not relevant.

[5] For the same reasons, the second auxiliary request, which aims at a fragmentation of the documents according to a precise date of receipt still to be determined, cannot be granted either. Even the appellant’s motion to take evidence is irrelevant for the decision on the case and had to be dismissed.

[6] The third auxiliary request aims at setting aside the impugned decision and at a remittal of the case to the first instance for further decision.

It aims at a continuation of the examining proceedings on the basis of the disclosure of the documents which had been received on June 14, 1995, before midnight, i.e. form F 1001, claims 1 to 27 of the divisional application, which are almost identical with claims 1 to 27 of the parent application, of pages 1/26 and 2/26 of the divisional application as well as Fig. 1 and 2. The Board does not see any reason which would be in conflict with a continuation of the examining proceedings on the basis of the disclosure of those documents.

[...]  The case is referred to the first instance for further decision.

NB: This decision has recently been commented by Privat Vigand, to whom I owe much of my knowledge on EPC matters. His comments have been published in Proprieté Industrielle, Juillet-août 2010, p. 29. Prof. Vigand writes (my translation from the French):

“[...] Taking into account the date of filing of the patent under consideration, the EPC 2000 was not applicable. It is nevertheless interesting to note that if the same situation occurred after the entry into force of this convention, it could be treated without referring to the Communication of 1992.

As a matter of fact, new R 56(1) provides that when the EPO finds that some parts of the application are missing (which is clearly the case here) it imparts a time limit (two months) to the applicant for filing them.

If the latter sends the missing parts to the EPO within the time limit, a new date of filing is given to the application, this new date being the date on which the missing parts were received (R 56(2)), unless the missing parts are found in exactly the same form (à l’identique) in the priority document, in which case the date of filing is not changed (R 56(3)).

For the sake of completeness it has to be added that if the date of filing has been modified, the applicant has the “right to repent” within one month and to withdraw the missing parts in order to obtain anew the original date of filing (R 56(6)).

In any case, when this time limit has expired, the date of filing is irrevocably fixed and the applicant will not be able to request its modification any more.”

Personally, I am not so sure that R 56 would be applicable in such a situation (as the missing parts are missing only a posteriori, so to say). Be that as it may, the last sentence of Prof. Vigand’s statement is certainly what we should retain from this decision.

To download the whole decision (in German), you may click here.