G 1/09 – Pending Matters

The Enlarged Board of appeal (EBA) has spoken again!

Interlocutory decision J 2/08 had referred the following point of law to the EBA:

“Is an application which has been refused by a decision of the Examining Division (ED) thereafter still pending within the meaning of R 25 EPC 1973 (R 36(1) EPC) until the expiry of the time limit for filing a notice of appeal, when no appeal has been filed?”

Here is what the EBA had to say:

Rules of interpretation

[3.1] It is common ground that the EPC does not contain a definition of the notion ‘pending European patent application’. In particular, the EPC does not define the points in time at which the pending status of an application begins and ends in all possible situations. An interpretation of the expression ‘pending European patent application’ is therefore necessary in view of the referred question.

It is the established jurisprudence of the EBA to apply, for the interpretation of the EPC, the rules for interpretation laid down in the Vienna Convention on the Law of Treaties (VCLT) (see e.g. G 5/83 [2-5]; G 1/07 [3.1]; G 2/08 [4]). According to the general rule of interpretation of Article 31(1) VCLT

“a treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose”.

According to Article 32 VCLT

“recourse may be had to supplementary means of interpretation, including the preparatory work of the treaty ( . . . ) , in order to confirm the meaning resulting from the application of Article 31 VCLT, or to determine the meaning when the interpretation according to Article 31: (a) leaves the meaning ambiguous or obscure; or (b) leads to a result which is manifestly absurd or unreasonable”.

Thus, before considering the legislative history of Rule 25 EPC 1973, in particular document CA/127/01, the meaning of the expression ‘pending European patent application’ is to be determined based on the general rule of interpretation enshrined in Article 31 VCLT.

‘Pending European patent application’

[3.2.1] In the legal system of the EPC a European patent application involves two aspects. On the one hand, it is an object of property (A 71 EPC 1973 ff.) deriving from the right of the inventor to a European patent (A 60(1) EPC 1973) and conferring on its proprietor, inter alia, provisional protection under A 67 EPC 1973. On the other hand, in proceedings before the EPO a European patent application also involves procedural rights which the applicant is entitled to exercise (A 60(3) EPC 1973). The term ‘European patent application’ may therefore stand for substantive rights as well as for procedural rights of the applicant.

[3.2.2] Concerning the term ‘pending’ (‘anhängig’, ‘en instance’), it is to be noted that the EPC does not use this term in a uniform manner. It is not only used in connection with pending patent applications (R 25(1) and A 175(2) EPC 1973), but also in connection with proceedings pending before the EPO (see e.g. R 13(3) EPC 1973 and A 175(3) EPC 1973). The meaning of ‘pending’ is not the same in these contexts. If e.g. proceedings are no longer pending before the EPO because they have been stayed according to R 13 (1) EPC 1973, the patent application remains nevertheless, by definition, pending as it cannot be withdrawn during suspension. On the other hand, opposition proceedings before the EPO can only be made pending after grant of the patent, i.e. when the patent application is no longer pending.

It is to be emphasised in this connection that R 25 EPC 1973 refers to “any pending patent application” rather than to proceedings pending before the EPO. It is thus not relevant for Rule 25 EPC 1973 whether or not proceedings are pending before the EPO.

[3.2.3] R 25 EPC 1973 implementing A 76 EPC 1973 has been amended several times. In the version according to the decision of the Administrative Council (AC) of 10 June 1988 it contained, for the first time, the explicit requirement of a pending earlier application. It read:

“Up to the approval of the text, in accordance with Rule 51, paragraph 4, in which the European patent is to be granted, the applicant may file a divisional application on the pending earlier European patent application.”

Whereas the deadline set by the approval of the text is clearly a procedural provision (G 10/92 [4]), the requirement of a pending earlier patent application is of a different nature. It rather reflects the applicant’s substantive right under A 76 to file a divisional application on an earlier application if the subject matter of the earlier application is “still present” at the time the divisional application is filed (see G 1/05 [11.2]).

By the decision of the AC of 18 October 2001, the procedural deadline of the approval of the text was removed from R 25 EPC 1973 and only the substantive requirement of a pending application remained in the version to be applied to the present case.

[3.2.4] As follows from the above observations, a ‘pending (earlier) European patent application’ in the specific context of R 25 EPC 1973 is a patent application in a status in which substantive rights deriving therefrom under the EPC are (still) in existence.

This interpretation conforms with the view of the Legal Board of Appeal in decision J 18/04 according to which the term “pending … patent application” in R 25 EPC 1973 does not establish a time limit, but rather a substantive requirement (J 18/04 [7 ff.]).

[3.2.5] Clearly, the pending status of an earlier European patent application does not mean that a divisional application relating to it can always be filed. This may be excluded by procedural provisions, such as e.g. R 13 EPC 1973, which prevents, as lex specialis, the filing of a divisional application, if the proceedings for the pending earlier application are stayed (J 20/05 [3]). Similarly, Article 23(1) PCT, which provides that no designated Office shall process or examine the international application prior to the expiration of the time limit under Article 22 PCT takes precedence, in accordance with A 150(2) EPC 1973, over R 25 EPC 1973 and thus prevents the filing of divisional applications relating to pending Euro-PCT applications before they are processed by the EPO acting as a designated or elected Office. Finally, R 36 as presently in force sets certain procedural time limits for filing divisional applications during the examination procedure.

Existence of substantive rights deriving from European patent applications

[4.1] The above interpretation of the legal term ‘pending European patent application’ […] leads to the further question of until when are substantive rights deriving from European patent applications in existence. For answering this question a distinction has to be made between the refusa1 of the application and the grant of a patent.

Refusal of the application

[4.2.1] The substantive rights of an applicant include provisional protection, pursuant to A 67 EPC 1973, conferred by the European patent application after publication […]. A 67(4) EPC 1973 clearly indicates until when such substantive rights deriving from a European patent application are in existence if a patent is not granted. In particular, it provides that the European patent application shall be deemed never to have had the effects of provisional protection when it has been withdrawn, deemed to be withdrawn or “finally refused” (German version: “rechtskräftig zurückgewiesen” - French version: “rejetée en vertu d’une décision passée en force de chose jugée”).

Substantive rights of the applicant under A 67 EPC 1973 may therefore continue to exist after refusa1 of the application until the decision to refuse becomes final (rechtskräftig, passée en force de chose jugée). Third parties using the invention before the decision to refuse has become final incur the risk of becoming liable under national law based on A 67 EPC 1973.

[4.2.2] As the Legal Board of Appeal observed in point [17] of the referral decision J 2/08, it is “accepted that the final (res iudicata) character of a first-instance decision (Rechtskraft) will only ensue upon expiry of the time limit for filing an appeal”.

This concept is indeed well-established in the Contracting States. Reference is made, for example, to the Code of Civil Procedure of Germany (§ 705, Zivilprozessordnung), of France (Article 500, Code de Procédure Civile) and of Austria (§ 411, Zivilprozessordnung); for Switzerland reference is made to Vogel/Spühler, Grundriss des Zivilprozessrechts, 8. Auflage 2006, § 40, No. 62.

These national provisions in essence provide that decisions do not become final until the expiry of the respective period for seeking ordinary means of legal redress. There is no reason to deviate from this generally accepted principle in the context of A 67 (4) EPC 1973 (see also Schennen in Singer/Stauder, “Europaisches Patentübereinkommen”, 5th edition 2010, Article 67, marginal number 25).

[4.2.3] The legal consequences of A 67(4) EPC 1973 referred to above are independent of the suspensive effect of a possible appeal, nor do they depend on the point in time when the decision to refuse of the first instance becomes effective within the meaning of decision G 12/91 [2]. A 67(4) rather is a self-contained provision indicating the point in time at which substantive rights conferred by a European patent application and therefore its pending status must end. The retroactive effect of a final decision to refuse on the rights conferred upon the applicant under A 67 EPC 1973 does not influence the pending status of the application before such a decision is final.

[4.2.4] From the above the EBA concludes that under the EPC a patent application which has been refused by the ED is thereafter still pending within the meaning of R 25 EPC 1973 until the expiry of the period for filing an appeal and, on the day after, is no longer pending if no appeal is filed.

The same conclusion applies to R 36(1) EPC 2000 both in its former and its current version.

[4.2.5] The interpretation given above does not contradict preparatory document CA/127/01 drawn up in view of the amendment of R 25 EPC 1973 by the decision of the AC of 18 October 2001 and referred to by both the appellant and the President of the EPO. Point 6 of this document deals with the question of how long “grant proceedings” are pending . However, as mentioned above, pending proceedings cannot simply be equated with a pending application. Moreover, as the President correctly pointed out, document CA/127/01 mainly deals with the pending status of an application in the case of grant. Nevertheless, concerning refusal, it is stated in point 6 that “grant proceedings are pending […] until the date that an application is finally refused […].” There is no reason to assume that the authors of this document intended to give the term ‘finally refused’ (rechtskräftig zurückgewiesen - définitivement rejetée) any meaning other than its ordinary and generally accepted meaning[…].

[4.2.6] In any case, the interpretation of R 25(1) EPC 1973 given here complies with the purpose, indicated in document CA/127/01, of making the final date for filing a divisional application more transparent for the applicant and for third parties. According to the existing practice of the EPO under R 25(1) EPC 1973, an application ceases to be pending on notification of the decision to refuse in written proceedings or on the pronouncement of the decision in oral proceedings, as the case may be. In contrast, on the interpretation adopted by the EBA, the application in both cases is pending until the expiry of the period for filing an appeal and is no longer pending on the day after, if no appeal is filed. This can always be determined from the notification of the first-instance (written) decision (A 108 EPC 1973), a fact which may help to prevent unexpected legal consequences of decisions to refuse and to avoid the need for appeals filed for the sole purpose of making a refused application “pending again”.

Grant of a patent (obiter dictum)

[4.3.1] The President of the EPO also commented on the question of until when is a European patent application pending within the meaning of R 25(1) EPC 1973 in the case of grant. The President referred to the established practice of the EPO according to which, based on A 97(4) EPC 1973, the application is deemed to be still pending during the period between the decision to grant the patent and the publication of the mention of grant .

[4.3.2] It may be noted that the view of the President referred to above is not in contradiction with the EBA’s interpretation of R 25(1) EPC 1973 according to which a European patent application is pending as long as substantive rights deriving therefrom under the EPC are in existence […].

For the case of grant, A 64(1) EPC 1973 provides that, from the date of publication of the mention of the grant, it is no longer the patent application but the granted patent which confers on its proprietor the same rights as would be conferred by a national patent granted in that State. Article 64(1) EPC 1973 is in conformity with Article 97(4) EPC 1973 according to which the decision to grant shall not take effect until the date of publication of the mention of the grant. Thus, in the case of a decision to grant, the pending status of the European patent application normally ceases on the day before the mention of its grant is published since from that point in time substantive rights under the EPC are no longer derived from the patent application, but now derive from the granted patent.

[4.3.3] The President of the EPO further addressed the issue of whether the filing of a divisional application would be allowed irrespective of an (obviously) inadmissible appeal being filed with regard to the parent application.

As a consequence of the interpretation of R 25 EPC 1973 set out above, if no appeal has been filed, the deadline for filing a divisional application is either the date of expiry of the time limit for filing a notice of appeal or the day before the date of publication of the mention of the grant, depending respectively on whether a decision to refuse or a decision to grant has been issued. In neither of these situations is the filing of an appeal necessary to ensure pendency of the application.

The further issue addressed by the President however concerns divisional applications filed after the respective deadline for the case where an (obviously) inadmissible appeal has been filed in order to maintain pendency of the application past the deadline. The point of law referred to the EBA however only concerns the case in which no appeal is filed.

The further issue addressed by the President is therefore not covered by the referral decision and requires no answer in this decision.

Order

For these reasons, the question of law which was referred to the EBA is answered as follows:

In the case where no appeal is filed, a European patent application which has been refused by a decision of the ED is thereafter pending within the meaning of R 25 EPC 1973 (R 36(1)) until the expiry of the time limit for filing a notice of appeal.

In my opinion, the present decision shows the EBA at its best: the decision is well reasoned, concise, to the point (quite unlike the IPKat, I did not spot “much pontification”) and provides a simple, practical solution to a delicate problem. A job well done, I would say.

Given the new R 36 time limits, the decision is likely not to have a great impact, but I definitely would consider it to be a must-read for people intending to tackle EQE paper D during the years to come.

The whole decision can be downloaded from Register Plus.

Once more, Laurent Teyssèdre was the first to report this decision. You can find his post here. Having taken a nap, the IPKat finally also woke up. The rest of the blogosphere is expected to follow soon.

T 1392/08 – Desperately Seeking S … ynergy

I owe the knowledge of this decision to Le blog du droit européen des brevets.

The decision deals with an appeal against the refusal of an application by the Examining Division (ED). Claim 1 of the main request before the ED read :

1. A deodorant composition comprising at least one phenolic compound and at least one enzyme capable of oxidizing. the at least one phenolic compound into a compound having a quinone structure, characterized in that said deodorant composition further comprises at least one of flavor and fragrance that comprises at least one compound selected from the group consisting of one or several volatile compounds having a molecular weight lower than 500 Dalton; an essential oil; and plant, vegetable or fruit extracts, said at least one of flavor and fragrance producing a synergistic deodorizing effect when mixed with said phenolic compound(s) and enzyme(s).

The ED found this claim to lack clarity and sufficiency of disclosure and finally rejected it for a lack of inventive step. Here is what the Examiners had to say on clarity (click to enlarge):

 

As far as sufficiency was concerned, the ED studied the comparative trials provided by the appellant and then concluded:

The same arguments were found to apply to claim 1 of the second auxiliary request, which is almost identical to claim 1 of the main request before the Board:

1. A deodorant composition comprising at least one phenolic compound and at least one enzyme capable of oxidizing the at least one phenolic compound into a compound having a quinone structure, characterized in that said deodorant composition further comprises at least one of flavor and fragrance that comprises at least one compound selected from the group consisting of one or several volatile compounds having a molecular weight lower than 500 Dalton; an essential oil; and plant, vegetable or fruit extracts, said deodorant composition comprising said at least one of flavor and fragrance in an amount producing a synergistic deodorizing effect when mixed with said phenolic compound(s) and enzyme(s); wherein said at least one of flavor and fragrance is citrus-type fragrance, mint-type fragrance, wood-type fragrance, fruit-and floral-type fragrance, greenery- and floral-type fragrance, peppermint-type flavour, mint-type flavour, lemon-type flavour or perilla-type flavor.

Here is what the Board had to say :

[2.1] Claim 1 of the main request is directed to a deodorant composition comprising at least one phenolic compound and at least one enzyme capable of oxidizing the phenolic compound and further at least one of flavour and fragrance. The amount of flavour and fragrance is defined using a functional feature, namely that the composition comprises “the at least one of flavour and fragrance in an amount producing a synergistic deodorizing effect when mixed with said phenolic compound(s) and enzyme(s)”.

[2.2] Thus Claim 1 requires the use of an amount of flavour or fragrance to obtain a deodorant composition “producing a synergistic deodorizing effect”, that is to say an additional effect that goes beyond the sum of the effect of each component taken in isolation.

[2.3] A 83 requires that the European patent application disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. The requirements of A 83 are met if at least one way is clearly indicated in the patent specification enabling the skilled person to carry out the invention, and if the disclosure allows the invention to be performed in the whole area claimed without undue burden, if necessary applying common general knowledge.

In the present case the requirements of A 83 will be fulfilled if the skilled person knows, without exceeding his normal skills and knowledge, what he has to do in order to obtain compositions showing a synergistic deodorizing effect.

[2.4] The application as originally filed indicates the amounts of the single components, phenolic compound, enzyme and flavour and fragrance to be used in the composition […], but is silent about the amount to be used in order to achieve a synergistic deodorizing effect. Moreover, none of the examples in the application demonstrates that a synergistic deodorizing effect is achieved.

The experimental results reported in the application […] demonstrate that the urine smell can be suppressed using the claimed deodorizing compositions but they do not show that a synergistic effect is obtained. The results on Table 18 indicate that the malodour smelling index is reduced from 5.0 to 0, but this result can also be explained by an additive effect of the components as conceded the appellant during the OPs. Concerning the other results in Table 18, it is again noted that very good results are obtained for the freshness index, cleanliness index and pleasant feeling index when using all the components of the deodorant compositions, but the data given in the table do not allow the conclusion that these results are achieved by the presence of a “synergistic effect”.

The same considerations apply for the experimental results described on Tables 19 - 35 of the application as filed.

[2.5] It follows that the examples in the application do not allow the skilled person to prepare compositions wherein the flavour and fragrance is present “in an amount producing a synergistic effect”. Moreover, the absence of any other instructions as to the factors which affect the occurrence of a synergistically increased deodorizing effect obliges the skilled person to rely exclusively on trial and error experiments to establish which amounts may be used in the claimed compositions.

[2.6] According to EPO practice (see the “Case Law of the Boards of Appeal of the EPO”, 5th edition 2005, Chapter II.A.4, page 177), when trial and error experiments are required the disclosure in the patent should provide adequate information leading necessarily and directly towards success through the evaluation of the initial failures and, therefore, only a few attempts should be required to transform failure into success.

[2.7] In the present case, the person skilled in the art attempting to arrive at suitable compositions can only start by arbitrarily selecting random amounts of phenolic compound, enzyme and flavour or fragrance and then verify if the chosen amounts provide the intended effect. However, in the case of initial failure the skilled person is left without any guidance as to how to modify the compositions to obtain one with the desired synergistic deodorizing effect. The extent of trial and error experiments for the preparation of deodorizing compositions according to Claim 1 amounts to an undue burden.

[2.8] This conclusion is not affected by the further experimental evidence filed by the appellant during the appeal proceedings […]. In these experiments the amount of phenolic compound and enzyme used was reduced by 7.5 times when compared with the amount used in the embodiment of Table 18 (and in all other examples). Independently of the question whether or not a synergistic effect is shown when using such small amounts, the board notes that there is no information in the application as filed pointing to the fact that in order to obtain compositions showing a synergistic deodorizing effect the compositions of the examples should be modified by drastically reducing the amount of phenolic compound and enzyme used.

[2.9] For these reasons the requirements of A 83, sufficiency of disclosure, are not met.

The Board then turns to claim 1 of the first auxiliary request as filed during the oral proceedings (OPs), which reads as follows:

1. A deodorant composition comprising at least one phenolic compound and at least one enzyme capable of oxidizing the at least one phenolic compound into a compound having a quinone structure, characterized in that said deodorant composition further comprises at least one of flavor and fragrance that comprises at least one compound selected from the group consisting of one or several volatile compounds having a molecular weight lower than 500 Dalton; an essential oil; and plant, vegetable or fruit extracts, said deodorant composition comprising said at least one of flavor and fragrance in an amount sufficient to remove the last remaining trace of odours which cannot be inactivated by said at least one phenolic compound and at least one enzyme; wherein said at least one of flavor and fragrance is citrus-type fragrance, mint-type fragrance, musk- and wood-type fragrance, fruit-and floral-type fragrance, greenery- and floral-type fragrance, peppermint-type flavour, mint-type flavour, lemon-type flavour or perilla-type flavor.

NB: One might wonder whether the deletion of the synergistic effect from claim 1 is in conformity with A 123(2), but it turns out that it is because this feature was only contained in claim 2 as filed, whereas claim 1 of the auxiliary request is a combination of claims 1 and 3 as filed.

[3.1] Claim 1 of auxiliary request 1 is also directed to a deodorant composition wherein the amount of the components is defined using a functional feature. The functional feature now requires that the flavour and fragrance is present “in an amount sufficient to remove the last remaining trace of odours which cannot be inactivated by said at least one phenolic compound and at least one enzyme”.

[3.2] The amended claims no longer require the production of a synergistic affect and overcome the objections of the board in relation to the main request. The requirements of A 83 will now be fulfilled if the skilled person knows, without exceeding his normal skills and knowledge, what he has to do in order to remove the last remaining trace of odours which cannot be inactivated by the phenolic compound and the enzyme.

[3.3] The examples of embodiments 1 to 10 in the application […] clearly allow the skilled person to put the invention into practice. The compositions of embodiments E1 to E10 show that the last trace of odours not eliminated by the phenolic compound and the enzyme is removed by the addition of certain amounts of a flavour or fragrance. Thus, for instance, the results of Table 18 indicate that the weak urine odour that remains using only a phenolic compound and an enzyme can be removed by the addition of 10 μl of citrus-type fragrance […]. On the basis of the examples and comparative examples of the present application, the skilled person thus obtains sufficient guidance with regard to the amount of flavour or fragrance to be applied in order to eliminate the last trace of odours.

[3.4] The board is also satisfied that the invention can be performed in the whole area claimed. The subject-matter of Claim 1 is limited to the nine specific flavours or fragrances for which experimental evidence was provided in the application as filed. In these examples several phenolic compounds and enzymes were also used. There is no reason to doubt that when using other phenolic compounds or enzymes similar results would be obtained.

[3.5] The board concludes that sufficient information and guidance is at the skilled reader’s disposal, enabling him to successfully carry out the invention. Hence the requirements of A 83 are met.

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

T 299/08 – Bad Tactics

** Translation from the German **

[1] When issuing the summons for oral proceedings (OPs) on February 10, 2010, the Board has presented its provisional opinion in the present case and given a time limit of two months for filing statements. The [patent proprietor] has not taken advantage of this time limit although it had to be aware that the maintenance of its patent was in danger. It rather presented an auxiliary request for the first time during the OPs, without any plausible explanation for the belatedness.

The only argument of the [patent proprietor] was that the amendment was very simple and easily comprehensible, consisting in the mere introduction of features of a hitherto dependent claim into the main claim.

It is precisely because of the simplicity of the amendment that the [patent proprietor] could and should have filed the auxiliary request within the time limit set by the Board for responding to its notification of February 10, 2010. Therefore, the filing of the auxiliary request during the OPs is tantamount to tactical behaviour aiming at surprising the [opponent] with new facts and arguments.

The Board considers such a way of proceeding to be procedurally abusive (verfahrensmissbräuchlich). Therefore, the auxiliary request is not to be taken into account.

If you wish to download the whole decision (in German), please click here.

T 1370/08 – Weighed And Found Too Light

The present decision deals with the refusal of an application by an Examining Division (ED), primarily for lack of support in the description (A 84), but there were also other deficiencies under A 56, A 83 and A 123(2).

The applicant then filed an appeal and sent the following statement of grounds of appeal (click to enlarge):

The Board saw an admissibility problem:

[2.1] A 108 in conjunction with R 99(2) requires that a statement setting out the grounds of appeal is filed which indicates the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based.

In this respect, the jurisprudence of the boards of appeal has developed the general principle applicable to statements of grounds of appeal that the grounds of appeal should specify the legal or factual reasons on which the request for setting aside the decision is based (see for instance T 220/83). The arguments must be clearly and concisely presented to enable the board to understand immediately why the decision is alleged to be incorrect.

[2.2] In the present case, the grounds given consist, on the one hand, of a reference to reasons presented in earlier letters […] and in a facsimile […] and, on the other hand, of the allegation that the examiner had not properly understood the invention and was not correct in his assessment of the value of the invention. This is followed by a brief explanation as to the merits of the invention […].

[2.2.1] Statements of grounds of appeal which merely refer generally to submissions made in the first instance proceedings are normally not considered to be adequately substantiated since they do not clearly indicate which grounds of the decision are regarded as mistaken, and why, and therefore make it impossible for a board to immediately consider and decide upon the merits of the appeal without making investigations of its own (see for instance decisions T 646/92, T 188/92, T 287/90 or T 349/00).

In the case at hand, the situation is even worse : the submissions referred to in the statement of grounds of appeal include an acknowledgement that one of the reasons presented in the decision is in fact correct. The facsimile of 11 February 2008 responded to a communication of the ED […] which directly preceded its decision and which had raised concrete objections under A 56, A 83 and A 84. The facsimile reproduces the text of an email with comments which one of the inventors had sent to the appellant’s representative. Insofar as these comments make reference to the said communication of 15 November 2007, they acknowledge that the mathematical expression “1 - hp(x,l)” which appears in claim 1 of what is still the appellant’s main request is erroneous. In other words, the most recent submission made in the first instance proceedings to which reference is made as substantiation of the grounds of appeal amounts to an admission that the decision is correct in this respect and, as far as the reasons for refusal under A 84 are concerned, does not even attempt to defend the request on which the contested decision is based and which is maintained as the main request for the appeal.

As a matter of fact, the objection of lack of support in the description for a “weight” of the claimed value of “1 - hp(xi,l)” was not addressed by the appellant in any of their responses.

[2.2.2] The remainder of the facsimile merely alleges a fundamental misunderstanding of the invention on the part of the ED. It constitutes in fact the only substantive submission in the grounds of appeal presented.

However, it does not address the question as to why the findings of the ED, in particular the finding of the said lack of support of the claimed subject-matter in the description of the application, were wrong but, instead, briefly explains why the appellant considers his invention to be of value and useful.

Besides, this brief explanation refers to technical items, ie “three portions of the final corpus of training entries” and “collection of utterances data”, which are not the subject of the independent claims of the requests made with the statement of grounds of appeal.

[2.2.3] It follows that the statement of grounds of appeal does not specify any legal or factual reason why the objection identified by the ED in paragraph 1 of the reasons for the decision may be regarded to be wrong and therefore lacks adequate substantiation.

[2.3.1] Exceptionally, an appeal may be considered admissible even if its grounds fail to deal with the reasoning of the contested decision. In decision T 934/02 [2] the board found that an appeal which does not state any substantive reasons as to why the contested decision is wrong may nevertheless be regarded as being substantiated merely by the fact that amended claims are filed which deprive the contested decision of its basis.

Similarly, in decision T 729/90 [1.3], the board held that the fact alone that the statement of grounds of appeal contained a set of claims forming an auxiliary request rendered the appeal admissible.

However, in each of these cases, the respective board required that a causal link between the amended claims and the reasons given in the contested decision must be apparent. This causal link was evident either in the fact that the amended claims corresponded to a proposal of the ED or in the fact that an explanation had been provided as to why certain amendments had been performed and why the decision was therefore no longer valid.

[2.3.3] In the present case an auxiliary request was filed on 28 June 2008 with the statement of the grounds of appeal. However, a causal link has not been demonstrated between the amended claims and the reasons set out in the contested decision. In particular, the appellant’s statement of grounds of appeal does not contain any explanation as to the significance of the amendments made in the auxiliary request nor as to why these amendments address the objections raised by the ED, in particular in sections 2 and 3 of the reasons for the decision. Consequently, the mere act of filing an auxiliary request together with the statement of grounds of appeal in the present case does not make up for the necessary substantiation.

[2.4] For the above reasons, the statement of grounds of appeal filed in the present case amounts to no more than a mere assertion that the contested decision is incorrect, without stating the legal or factual reasons why that decision should be set aside (see T 432/88 [2]), and thus does not satisfy the provisions of A 108 in conjunction with R 99(2).

[…] The appeal is rejected as inadmissible.

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

R 9/10 – The Right Not To Remit

I feel that I will soon give up reporting on R decisions because we now know the story. Unless the lawmaker changes A 112a (which, even if envisaged, would take some years) or the Administrative Council opens up R 104, petition for review proceedings will be of little real interest for parties to appeal proceedings. Still, from time to time there are interesting details to be gleaned in those decisions of the Enlarged Board of appeal (EBA).

The present decision deals with a petition for review of decision T 893/07, which we have reported in an earlier post.

[5] The only ground relied on in the petition is A 112a(2)(c) which specifies a fundamental violation of A 113. The only applicable provision of that Article can be A 113(1) which provides that decisions of the EPO (which includes the Boards of Appeal) may only be based on grounds or evidence on which the parties have had an opportunity to be heard – in short, the right to be heard.

The petitioner’s case that its right to be heard was denied is based solely on the Board’s decision to refuse to remit the case to the first instance in accordance with the petitioner’s auxiliary request […]. That refusal, according to the petitioner, denied it the chance of dealing adequately, i.e. at two instances, with document D3.

[6] The EBA generally agrees with the petitioner’s submissions […] that the right to be heard means an adequate opportunity to be heard. However, these submissions do not affect the present case. On the issue which the petitioner itself calls the “main issue” […] – namely whether or not the case should have been remitted to the first instance - the petitioner was, as the petition itself acknowledges, heard. There was quite clearly no denial of the right to be heard on that issue since the petitioner relies on the summary in the decision (see T 893/07 [3.1]) of its own arguments and makes no complaint whatsoever that it was denied any opportunity to be heard on this issue.

[7] As mentioned above […], the petitioner’s case that its right to be heard was denied is based solely on the Board’s decision to refuse to remit the case to the first instance. Thus the petitioner’s one and only real complaint is not that it was not heard on the issue of remittal but that the Board of Appeal, after hearing the petitioner, did not order remittal. This appears not only from its reasons for setting the decision aside […], but also from its opening argument […] and its argument about R 106 that its right to be heard was breached by the refusal to remit […]. However, and apart from what is said in point [6] above, there are several reasons why the actual decision cannot be reviewed in petition proceedings.

[8] First, there is no right to a remittal, only a discretion which may or may not be exercised in a party’s favour under A 111(1) and which is the subject of considerable case-law. The petition itself acknowledges this in the first part of its long attack on T 111/98 […] and in its expression of hope that the EBA will “confirm the correct principles to be applied by the Board of Appeal” […].

[9] Second, the right to be heard which has allegedly been lost is that of being heard again at first instance. However, if there is no right to a remittal, there is no right to a further hearing before the first instance so no right to be heard can have been denied. If, as in this case, there was no denial of the right to be heard in arriving at the decision on the remittal request, then al1 arguments as to other steps which might have been taken if remittal had been ordered are speculative and irrelevant (see R 12/09 [8]).

[10] Third, the issue whether to remit or not was a matter of substance in the appeal proceedings which the EBA cannot consider in petition proceedings (see R 1/08 [2.1]). The petitioner itself demonstrates this by basing the petition on its disagreement with the Board’s interpretation of the case-law […].

Further, the EBA cannot in petition proceedings act as a third instance or second-tier appellate tribunal (see again R 1/08 [2.1]). However, that is exactly what the petition seeks when it asks the EBA for a decision setting out the principles to be applied by the Board of Appeal in a re-opened case […].

[11] For completeness, the EBA notes there are two other comments in the petition which are critical of the Board of Appeal - that it raised new objections in its communication only ten weeks before the oral proceedings (OPs) and that it raised another new objection at the OPs […]. Neither of those criticisms is used to support the alleged fundamental procedural defect as such but, even if they were, the EBA’s view would not be different.

[12] The first of those points - that new objections were raised in the Board’s communication - cannot have any bearing on the petition at al1 since it appears from the petition itself […] that the petitioner overcame all objections in both the decision under appeal and the Board’s communication. The Board’s written decision confirms this by only dealing with the objection of lack of inventive step over D3 which was apparently first raised at the OPs.

[13] The second point - namely, that the objection of lack of inventive step over document D3 was only raised at the OPs - simply forms part of the misguided argument that the refusa1 to remit the case to the first instance was a denial of the right to be heard. Even if one accepts that the objection was raised late (and, since novelty over D3 was an objection raised in the communication, inventive step over D3 was at least a foreseeable objection from that point in time too), this appears to be the true reason why the petitioner wanted remittal. By “true reason” the EBA means that, although the petitioner observes that the objection was only raised at the OPs, its stated complaint is of inadequate opportunity to deal with D3 without remittal. D3 was raised in the communication ten weeks before the OPs, there was no request to adjourn those proceedings, and the petitioner came prepared to argue novelty over D3, did so and succeeded.

In truth, the request for remittal was only maintained, not because D3 was introduced ten weeks before, but because the Board, at the OPs, considered inventive step over D3 and ultimately found against the petitioner on that. But, as already explained […], the petitioner was heard on its request for remittal which was refused in the exercise of the Board’s discretion which was part of the substance of the case.

[14] Thus, even if the petitioner’s criticisms are elevated to the status of supporting arguments, there is no question of a denial of the right to be heard and no fundamental procedural defect.

The petition is clearly unallowable.

Should you wish to download the whole decision, you can do so here.

T 1002/09 – Improving Gut Feelings

Claim 1 of the main request before the Board read:

1. A liquid nutritional composition for use in promoting gut health in an elderly patient comprising a protein source, a source of digestible carbohydrates and a source of dietary fibre, characterised in that it has an energy density of 1.3-1.8 kcal/ml and dietary fibre in an amount of more than 2.5g/100ml.

In its assessment of novelty, the Board is confronted with the need to qualify this claim: is it a claim directed to a first medical application or not? The qualification of the indication of use (“for use in promoting gut health in an elderly patent”) will prove decisive:

[3.1] As in Claim 1 of the main request before the examining division (ED) the liquid nutritional composition according to Claim 1 is characterised in that it has an energy density of 1.3- 1.8 kcal/ml and dietary fibre in an amount of more than 2.5 g/100ml. The board shares the view of the ED that such a composition is novel over the prior art cited in the examining procedure in particular with respect to D3 and D5.

[3.1.1] D3 discloses a nutritional composition for elderly patients. In one embodiment, the composition comprises a protein source, a carbohydrate and a lipid source wherein the carbohydrate source includes a source of dietary fibre having a soluble fibre to insoluble fibre ratio of about 1:4 to 4:1 (Claim 2). D3 recommends that the level of fibre should be low with levels of between 0.8 and 1.5 g/100 ml […]. A higher fibre content, let alone in combination with the energy density required in Claim 1, is not disclosed in D3.

[3.1.2] D5 relates to a nutritional composition, suitable for enteral administration, comprising dietary fibre, characterised in that it contains 5-120 g of fibre per daily dosage of the composition, and the fibre consists of 15-50 wt.% of soluble non-starch polysaccharides, 15-45 wt.% of insoluble non-starch polysaccharides, and 8-70 wt.% of oligosaccharides and/or resistant starch (Claim 1). D5 discloses that fibre plays an important role not only in the nutrition of healthy people but also of hospital patients or persons with constipation or with diarrhoea […]. However, very little guidance is given as to the actual composition of such a nutritional composition. As far as fibre content is concerned, this may vary between 0.5 and 12 g/l00 ml with 1 to 2 g/ l00 ml being disclosed in Example 2.

The only guidance on energy content suggests a fibre content of 0.5-l2 g/100 ml at an energy content of 2 kcal/ml (derived from Claims 7 and 9). The combination of an energy density of 1.3- 1.8 kcal/ml with an amount of dietary fibre of more than 2.5 g/100ml is not clearly and unambiguously derivable from this document.

[3.1.3] The board therefore notes that novelty of the claimed composition is given irrespective of the technical meaning of the wording “for use in promoting gut health in an elderly patient”.

[3.2] In order to assess whether the feature in Claim 1 “… for use in promoting gut health in an elderly patient” has merely a descriptive character or represents a further technical feature with the result that Claim 1 has to be considered as a claim in accordance with a first medical indication in analogy to A 54(4), the relevant question to be answered is whether the intended use represents a treatment by therapy in the sense of A 53(c). Considering that malnutrition is a cause of digestive and gastro-intestinal disorders, associated with gut discomfort and pain, the invention aims at providing a nutritional composition to regulate gut motility and improve digestive tract health. In the board’s judgment, alleviation of pain and suffering by promoting gut health in applying measures which regulate gut flora and improve intestinal transit are therefore therapeutic measures (at least in the sense of prophylaxis) for preventing malfunctions or illness of the human body. This view is in line with the definition given for therapy in the case law of the boards of appeal where it is stated that therapy “clearly relates to the treatment of a disease in general or to a curative treatment in the narrow sense as well as the alleviation of the symptoms of pain and suffering” (e.g. T 144/83 [3]).

As regards the reference “in an elderly patient” this implies a clear limitation of the therapy to this demographic group. It is only plausible that different age groups have different needs concerning the nutrition (e.g. due to a change in the metabolism with age). Thus, in analogy to A 54(4) (“first medical use of a known compound”) Claim 1 is directed to a purpose-related product.

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

T 996/09 – Silence With Consequences

Once a Board has ordered the Opposition Division (OD) to maintain a patent in amended form with an adapted description, one might think that the opposition proceedings will come to an end soon. The present decision shows a case where the OD messed things up at such a late stage. It’s amazing to see how many procedural violations were made by a little silence.

A 113(1) - Right to be heard

[1] According to A 113(1), a decision of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comment. The right to be heard is a fundamental guarantor for the parties that proceedings before the EPO will be conducted fairly and openly (cf. J 20/85, [4(a)] and J 3/90) and is intended to ensure that the parties to the proceedings are not taken by surprise by grounds mentioned in an adverse decision (cf. inter alia T 669/90; T 892/92; T 594/00 and T 343/01, see “Case Law of the Boards of Appeal of the EPO, 5th edition 2006, VI.B.1, page 322).

According to the constant case law of the Boards of Appeal, the infringement of the right to be heard is a substantial procedural violation that justifies the reimbursement of the appeal fee (cf. “Case Law”, supra, VII.D.15.4.3, page 655).

[2] In inter partes proceedings the right to be heard is inextricably linked to the principle of equal rights which requires the opposition division (OD) to ensure that the parties can exchange their submissions in full and have equal opportunity to comment on them. Furthermore, the parties can legitimately expect to be informed about the conduct of the proceedings (cf. “Case Law”, supra, VI.A.1, page 311 and VII.C.2, page 533).

[3] In the present case, the board notes that, in the first appeal proceedings, the decision of the then competent board was sent to the parties on 6 February 2008. In a communication pursuant to A 101(1) and R 81(2) to (3) sent to the parties on 16 April 2008, the OD requested the patentee to provide, within a period of four months of notification of the communication, a description adapted to claims 1 to 27 of the first auxiliary request filed during the oral proceedings (OPs) before the board.

[4] On 28 April 2008, opponent 04 inquired by fax […] whether the OD wanted the opponents to file observations within the same time period set for the patentee in the above communication or, whether it intended to set the opponents a period for observations once the patentee/respondent had filed an adapted description. Precautionary, opponent 04 also requested OPs before any decision of the OD was taken. No reply was given to that enquiry of opponent 04 by the OD.

[5] In the absence of any reply from the OD, opponent 04 filed by fax of 14 August 2008 […] eight pages of observations on the criteria to be used for adapting the description and on the paragraphs of the description which, in its view, required such adaptation. On 20 August 2008, the OD forwarded these submissions to the other parties […].

[6] On 28 August 2008, the patentee provided by fax […] the adapted description, which, as shown by enclosed copies of a patentee’s letter and of an acknowledgment of receipt by the EPO, had already been sent to the OD on 31 July 2008. No mention was made in these submissions to those filed by opponent 04 on 14 August 2008 nor could any have been made since they were earlier […] than those made by opponent 04. OPs were also precautionarily (sic) requested in case of a decision of the OD adverse to the patentee/respondent.

On 4 September 2009, the OD forwarded these submissions of the patentee to all opponents, including opponent 04. No comments were made to the submissions of the patentee or to those of opponent 04. The OD set a time period of 2 months for the parties to file observations. This time limit expired with no submissions received from any of the opponents, not even from opponent 04.

[8] The now appealed interlocutory decision was issued on 13 March 2009 by the OD without further submissions from the parties or a communication from the OD.

[9] In view of the above indicated course of events in the opposition proceedings, the board considers that the OD failed to clearly inform the parties on both its opinion and its intentions and, as a result thereof, the parties were taken by surprise by the OD issuing an interlocutory decision without sending a further communication to the parties or summoning them to OPs. The mere forwarding of the patentee’s submissions with the adapted description cannot be seen, in the absence of any comment, as an acknowledgment by the OD of not having any objections thereto, let alone that this description overcame those objections raised by opponent 04 in its letter of 14 August 2008. All the less so, since no reply had ever been given to opponent 04 submissions by the OD or by the patentee in any of its submissions.

Although, by forwarding the patentee’s adapted description to the opponents, the OD gave them an explicit opportunity to comment on that description, the fact that opponent 04 did not seize this opportunity - not even by way of back-reference to its submissions of 14 August 2008 - cannot be considered as an acknowledgment of its agreement with that description or as a withdrawal of all its objections raised earlier in the proceedings.

In the absence of any reply to its submissions of 14 August 2008 by the OD or of any comment thereto by the patentee, opponent 04 could not have expected that these submissions would have been merely disregarded by the OD and that an interlocutory decision would immediately be issued by the OD without previously informing the parties of its intention. The more so, in view of the fact that its precautionary request for OPs filed on 28 April 2008 had never been withdrawn.

[11] In line with the above mentioned principles of good faith governing procedural matters between the EPO and the concerned parties, as established by the constant case law of the Boards of Appeal, the board considers that, in the present case, the OD contravened the requirements of A 113(1).

R 111(2) - Form of the decisions

[12] According to R 111(2), decisions of the EPO which are open to appeal shall be reasoned. The failure to provide adequate reasoning in a decision at first instance in accordance with R 111(2) is considered by the established case law of the Boards of Appeal to be a substantial procedural violation in itself justifying the reimbursement of the appeal fee (cf. “Case Law”, supra, VII.D.15.4.4, page 657).

[13] In the present case, the board notes that, in the decision under appeal, no reference is ever made to the submissions of opponent 04 filed on 14 August 2008 - not even in the “Summary of Facts and Submissions”. In that part of the decision under appeal, it is only stated that no comments or observations were received in reply to the communication of the OD dated 4 September 2008, wherein the amended description and documents filed by the patentee on 28 August 2008 were forwarded to the opponents. Nevertheless, as stated [above], opponent 04 submitted, at an earlier stage of the procedure, observations and objections in its letter dated 14 August 2008.

[14] Even if the OD would have considered the arguments and submissions made by opponent 04 in its letter of 14 August 2008 as not admissible or irrelevant, for which there is not a shred of evidence on file, the OD could not simply have ignored them, but should have reasoned its decision according to R 111(2), in order to give the party a fair idea of why these submissions were not considered convincing or inadmissible, if at all.

[15] So far the appealed decision was taken without any consideration of opponent 04’s submissions of 14 August 2008, which were not even mentioned by the OD, the decision under appeal should be considered as based on inadequate reasons or at least as not sufficiently reasoned and thus, not fulfilling the requirements of R 111(2).

A 116(1) - Oral proceedings

[16] Whereas A 113(1) establishes the parties’ right to be heard in general, A 116(1) establishes in particular the right to OPs at the request of any party. According to the case law of the Boards of Appeal, the right to OPs is an extremely important procedural right which the EPO should take all reasonable steps to safeguard. If a request for OPs has been made, such proceedings have to be appointed. This provision is mandatory and leaves no room for discretion. If such a request is ignored, even due to an oversight, the decision must be set aside as null and void (cf. “Case Law”, supra, VI.C.1, page 333). In line thereof, the established case law of the Boards of Appeal considers also the infringement of A 116(1) to be a substantial procedural violation justifying in itself the reimbursement of the appeal fee (cf. “Case Law”, supra, VII.D.15.4.2, page 654).

[17] In the present case, the board notes that, in its letters of 28 April 2008 and 14 August 2008, opponent 04 unambiguously requested OPs before any decision being taken by the OD.

[18] As stated in point [13] supra, none of these letters is mentioned in the decision of the OD dated 13 March 2009 and now under appeal. It becomes apparent that they were merely ignored by the OD since, at no moment in the opposition proceedings, the OD gave the parties any information about its opinion on these requests for OPs from opponent 04 nor was any reason given in its final decision for not granting them.

[19] In line with the above mentioned case law of the Boards of Appeal, all parties to the opposition proceedings and, in particular opponent 04, could legitimately have expected to be informed by the OD in case that it did not intend to grant these requests for OPs and, in that case, to be given the opportunity to comment on such an important procedural issue.

[20] Therefore, in view of the facts of the present case, the board considers that, for this reason alone, a substantial procedural violation has occurred in the first instance proceedings and that the requirements of A 116(1) had not been fulfilled.

The Board then remitted the case to the first instance.

It may be a detail without importance, but I am astonished to see how often the Board cites the Case Law book, indicating even the page number, instead of citing the relevant decisions given therein.   

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

NB: This decision has also been discussed here.

R 20/09 – The R 104 Guillotine Again

Most readers of this blog are certainly aware of the fact that petitions for review hardly ever succeed. This is essentially due to the fact that the lawmaker gave these proceedings a very limited domain of application. A 112a(2), together with its implementing rule R 104, provides a very short list of grounds, and the Enlarged Board (EBA) recently ruined the hopes – based on the word “may” in R 104 – that this list was not exhaustive (see the recent post on R 16/09).

The present decision gives yet another case where the A 112a(2) + R 104 guillotine was applied. The petitioner complained that it had been refused a fair trial in case T 2351/08. The case underlying the petition appears to be one of those (hopefully, rare) cases where things get out of hand and accusations fly. Apparently, the petitioner suspected Board members of having “fixed” the minutes, in particular to prepare disciplinary proceedings against one of its representatives (The file is not very clear on this matter but it could be related to the fact that a person accompanying the representative declared at the end of the oral proceedings (OPs) that he had recorded the proceedings, which is strictly forbidden.) Obviously, most of the relevant documents are not open to public inspection, so it is impossible to have a clear idea of what was going on. Be that as it may, the petition did not survive the guillotine test.

The petitioner filed two petitions: a first one “by way of precaution”, based on the minutes of the OPs, and a second one “merely by way of precaution”, after it had received the decision in writing.

*** Translated from the German ***

[3.1] In the first request/submission the petitioner asserted that a substantial procedural violation falling under A 112a(2)(d) had occurred because there had been, as the petitioner put it, a “violation of the right to a fair trial (Verfahrensgestaltung)”:

• The minutes of the proceedings did not contain a summary of the facts (R 102 (f)) and the indication of the reasons (R 102 (h)) was missing. Therefore, the decision concerning the appeal could not be understood at all. This could not have been objected to during the proceedings on September 8, 2009.

• The Board had not accepted to insert certain legally relevant statements of the representative of the petitioner into the minutes of the proceedings.

• As far as the Annex A of the request for insertion into the minutes (Protokollierungsantrag) was concerned, the minutes contained a presentation of the course of the OPs and of the requests filed by the petitioner that was abbreviated beyond recognition.

• The minutes did not contain any decision on the requests that had been filed orally or in writing during the proceedings.

• The Board was not competent for excluding documents from public inspection.

• Notwithstanding relevant remarks made by the representative of the petitioner, the Board could not be brought to act in a comprehensible way and to hear or to take into account the evidence produced. As the Board had not made statements as to the substance during the proceedings, it was not possible, in spite of repeated remarks, to find out whether the Board had “finally intellectually assimilated” a certain submission of the representative which was decisive in the eyes of the petitioner.

[3.2] None of these procedural shortcomings – assuming that the elements cited are indeed shortcomings and have existed – is cited in R 104 or elsewhere in the Implementing Regulations. The representative of the petitioner appears to have missed that, according to the express wording of A 112a (2)(d), other severe procedural defects can only be considered if they are cited in the Implementing Regulations.

The assertion that the minutes did not contain any decision on the requests that had been filed orally or in writing during the proceedings, is, as regards content, only an objection against the minutes (Protokollrüge), that is to say an objection against the incompleteness of the minutes of the proceedings, and does not qualify as substantiation of a severe procedural defect under R 104 (b), all the more as the petitioner did not indicate any concrete request that was relevant for the proceedings and which had not been decided upon.

[3.3] The assertion of the petitioner that it had objected to this “way of proceeding” during the OPs as a violation of its right to be heard (A 113, A 112a(2)(c)), which was also stated in the minutes – although “mutilated beyond recognition”, cannot change this: deficient minutes, lack of competence of the Board for deciding on exclusion from public inspection, or the impossibility of knowing whether the Board had “finally intellectually assimilated” a certain submission of the representative cannot constitute a violation of A 113 within the meaning of A 112a (2)(c), even on a conceptual level, and, therefore, even less so a severe violation of this provision.

[3.4] In its second statement of grounds for the request […] the petitioner pointed out:

[3.4.1] During the OPs, the representatives of the petitioner came to the conviction, in view of the announcement of the Board that it would refuse to hear and to take into account evidence that had been produced, scientific publications and the arguments of the petitioner, that the right of the petitioner to be heard had been violated; they insisted that the deficiency had to be remedied. A petition for review would not become necessary if the Board granted the right to be heard and took into consideration the facts, evidence and arguments presented when drafting its decision.

As regards content, this does not go beyond the request dealt with above under paragraph [3.3]. Whether facts, evidence and arguments are taken into account concerns the correctness of a decision as regards its substance, whereas A 113(1) relates to the question of whether the parties to the proceedings were able to express themselves in respect of the reasons on which the decision is based, irrespective of whether they are correct or not. The nature of the reasons is often only clear from the (written) reasons; as a matter of fact, there is no obligation to raise objections under R 106 in this case, because “such objection could not be raised during the appeal proceedings”. Alternatively, if the basic reasons of the decision to be taken can be foreseen during the proceedings, one has to assume that the parties were able to express themselves in this regard within the meaning of A 113(1), unless they were hindered from doing so by concrete circumstances, such as a certain way of proceeding of the Board during the OPs. Whether a representative assesses things differently and, therefore, feels compelled to raise an objection during the OPs is not relevant, neither for [answering] the question of whether this objection qualifies under R 106 (a question that the Board expressly leaves open here, because it is not relevant for the decision […]), nor for the requirements under A 113(1), that is to say that the reasons under considerations have to be decisive for the decision. The petitioner did not make any statement in this respect.

[3.4.2] Moreover, the submission points out that one could not seriously consider that reasons for the decision posted on February 19, 2010, at a time when the first request for petition was already known, have anything to do with the decision announced on September 8, 2009, or could support the latter […]. The reasons for the decision omitted facts that were relevant for the decision but contained unimportant passages which were legally irrelevant with respect to the decision […]. Neither in the OPs nor in the reasons for the decision had the Board dealt with the relevant assertions of the petitioner as given in its submission of September 7, 2009 […]. The intrinsic contradictions contained in the decision announced on September 8, 2009 had not been dissolved by the reasons for the decision but had even been amplified.

This submission is limited to sweeping statements and judgments that are not understandable on a factual level (sachlich nicht nachvollziehbar). It was not indicated, nor is it obvious, which of the grounds for setting aside a decision mentioned in A 112a and/or R 104 had been realized. As a general rule, an (alleged) deficiency of a decision of a Board of appeal in respect to its substance does not fulfil the requirement.

[3.4.3] The petitioner further submitted that the reasons given for rejecting the request for insertion into the minutes of the statement of the [patent proprietor], also contained in Annex A, were incorrect and were contradictory with respect to the other entries into the minutes (Protokollierungen) which partly pursued objectives that were alien to the proceedings, that is to say the initiation of disciplinary proceedings against one of the representatives of the petitioner. Such proceedings were indeed initiated following a complaint (Anzeige) of the representative of the patent proprietor and respondent. It appeared likely (liege nahe) that there had been a consultation between the latter and the chairwoman, which had left the Board shortly after the drafting of the reasons for the decision. The chairwoman had abused her powers to decide on the content of the minutes by not recording in writing legally relevant explanations of the parties and by recording “alleged declarations” which were not to be mentioned in the minutes, according to the rules established by herself […], in order to pursue objectives that were alien to the proceedings. There were no precise reasons for the exclusion from file inspection in the reasons for the decision. The way in which the Board proceeded, which incidentally exceeded the competence entrusted to it, was only understandable if such circumstances alien to the proceedings played a role.

As far as these submissions are to be understood as an objection of partiality of the chairwoman, it is to be noted that, in the absence of any objection of any of the parties under A 24(3) there has not been a decision on this matter. However, such a decision is a requirement for a situation (Tatbestand) to which A 112a (2) (a) is directed. The Board cannot see how a decision on exclusion from public inspection could give rise to a ground for setting aside a decision under A 112a(2) and/or R 104 c, and the petitioner has not brought forward any arguments in this regard.

[3.4.4] Finally the petitioner pointed out that, as could be seen from the reasons for the decision, the Board considered itself entitled not to take into account submissions and arguments of the petitioner as well as documents it had filed, as being belated. This was based on a wrong understanding of the case law with respect to A 114(2). Proceedings before the Board of appeal were similar to court proceedings (gerichtsähnliches Verfahren). As a matter of fact, an independent examination of administrative acts of the Examining and Opposition Divisions by the Boards were only possible if the principle according to which the Board was to examine [the case] of its own motion (Amtsermittlungsgrundsatz) was to be applied without any limitation, which means that, in application of A 114(1), a Board has to take into account all the matter at issue (Prozessstoff) in order to come to a decision that is correct as far as the substance of the case is concerned (materiell richtig). A 114(2) would not lead to a different conclusion. Rather, the Board had violated R 116(1) because the summons to OPs did not contain any indication to questions that had to be discussed and no point in time before which preparatory submissions had to be filed. As a consequence, the Board had not prepared the OPs as required, which in itself was sufficient for making it impossible not to take into account facts and evidence as well as grounds for opposition and appeal, lest the right to be heard of the petitioners then acting as appellant be violated. Article 10a of the Rules of Procedure, which had not been adopted by the Contracting states as such but only by the President, was based on a misunderstanding in regard of the position of the Boards. Moreover, Article 18 RPBA provides that the Rules of Procedure shall be binding upon the BA, provided that they do not lead to a situation which would be incompatible with the spirit and purpose of the Convention. Discretion as to whether the Board admits grounds of appeal, and if so, which grounds, and discretion as to which facts and evidence the Board takes into account and, therefore, which facts it decides upon, would lead the principle according to which a Boards is to examine [a case] of its own motion (Amtsermittlungsgrundsatz), as well as the spirit and purpose of the EPC expressed therein, ad absurdum and was, therefore, not covered by the EPC. The Board had not considered any of this in the proceedings; the reasons drafted by the chairwoman of the Board were also silent on this topic. Thus the decision was deficient for having violated the right to be heard and was to be set aside […].

Apart from the fundamental misunderstanding concerning the regulatory content (Regelungsgehalt) of A 114 expressed in this reasoning, a violation of this provision is not a situation (Tatbestand) to which A 112a (2) (a) and/or R 104 are directed. In the absence of arguments, it is not comprehensible how this [situation] constituted a violation of the right to be heard. Moreover, the Board once more points out that the correctness of a decision, as regards its substance, is not object of proceedings under A 112a, and that – quite in keeping with the predominant practice of national courts – under Article 5(5) RPBA the mandatory written reasons for decisions of Boards of appeal are “drafted” by the rapporteur and not by the chairman or chairwoman, who (together with the Registrar) authenticates the decision by signature (R 102). Also, the Rules of Procedure of the Boards of Appeal are not adopted by the President (of the EPO or any other institution). In this respect the submissions (of the representative) of the petitioner are inconsistent with the applicable law.

[4] It is obvious from all that has been said that neither the proceedings preceding the impugned decision of Board 3.3.04 nor the decision itself allow to bring to bear any of the grounds for setting aside the decision mentioned under A 112a and/or R 104 and invoked by the petitioner.

The request for petition is rejected as being clearly unallowable.

Should you wish to download the whole decision, you can do so here.

NB: This decision is being published simultaneously on Laurent Teyssèdre’s blog.

T 737/08 – Can’t Have It Both Ways

This decision deals with an interesting configuration where several appeals were filed against the revocation of the patent by the Opposition Division: one by a licensee, another one by the official patentee and a third one by a company to which the patent had been (unofficially) transferred. The opponent thought that not even one of them should be admitted. The Board disagrees.

Appeal of Appellant I, H3B Holdings Ltd

[1.1] A notice of appeal requesting that the decision be set aside was filed by this appellant on 8 April 2008, asserting that it was “Master Licensee” acting on behalf of the proprietor of the patent in suit, namely “Franz Haase” (Appellant II). However, H3B Holdings Limited did not claim to be and was not at the time either the proprietor of the patent in suit (see below) or able to represent the proprietor in proceedings before the EPO (see A 134(1)). For this reason alone, this appeal must be rejected as inadmissible.

Appeal of Appellant II, Franz Haase III

[1.2] A notice of appeal was filed by a representative on behalf of this appellant on 10 April 2008, claiming to be the registered proprietor. The patent in suit had been granted in the name of Franz Haase III, who also was and still is named as proprietor in the Register of European Patents, and who as proprietor was also a party to the decision to revoke the patent. Prima facie therefore, the notice of appeal was filed by a person adversely affected by the decision to revoke the patent (A 107). A statement of grounds of appeal was subsequently filed on behalf of this appellant on 11 June 2008.

[1.3] However, the above notice of appeal filed on behalf of Appellant II also stated that there had been a transfer of rights from Franz Haase III to Kwench Systems International LLC (Appellant III) and that “for the avoidance of doubt” notice of appeal was also given on behalf of Appellant III. A single appeal fee was paid. At that stage, no evidence of any transfer had been filed with the EPO, no request had been made to register any such transfer and no appropriate transfer fee had been paid. The notice as signed by the representative was followed by the words “Professional Representative for Kwench Systems International LLC, Association No. 177”.

[1.4] The Respondent argues that the appeal by Franz Haase III is inadmissible. It is argued, first, that while it is legitimate to file a single appeal in the name of alternative appellants where there is uncertainty as to the correct appellant (see G 2/04 [3.2]), in the present case there was no uncertainty because no transfer of proprietor had been requested and so no appeal could have been filed on behalf of Appellant III. However, the Respondent goes on to argue that no appeal could have been filed on behalf of Appellant II either since at the relevant time it was no longer the proprietor of the patent.

The Board understands this to be a reference to the fact that a transfer of the patent, based on an assignment dated 22 September 2005, had in fact been registered in the United Kingdom register of patents on 22 May 2006. Although the Board considers this latter argument to be wrong (see paragraph [1.8]), the Respondent cannot have it both ways: the mere fact of the argument, even if wrong, shows that it was legitimate for a notice of appeal to be filed in the names of alternative appellants.

[1.5] The Respondent argues, secondly, that the notice of appeal was filed by the representative expressly on behalf of Appellant III, and therefore was not filed on behalf of Appellant II. Further, although an earlier authorisation dated 28 November 2006 had been filed by the representative, this named Franz R. Haase as the client and there was nothing to show that this was the same person as Appellant II (Franz Haase III). In any event, at this date, the United Kingdom patent had already been transferred to Appellant III and so the authorisation could not have been effective.

[1.6] The Board cannot accept these arguments. Although the words underneath the signature to the notice of appeal indicate that the representative was acting on behalf of Appellant III, this does not contradict the earlier statement in the notice that the notice of appeal was also given on behalf of the registered proprietor, Appellant II. Subject to the point made by the Respondent about the precise identity of the client, the representative had been acting for Appellant II in the opposition proceedings and there is nothing to suggest that he no longer had authority to act when the notice of appeal was filed. Given the background circumstances, the ordinary reading of the notice is also that the representative was claiming authority to act for both named appellants.

As to the identity of his client, the Board has no reason to believe that Franz R. Haase was not the same person as Appellant II (Franz Haase III). The letter dated 20 December 2006 enclosing the authority ran as follows:

“Re: EP 1,132,528 B1

Proprietor: Haase, Franz III

....

I act on behalf of the proprietor (Franz Haase) of the above patent, and enclose a copy of a letter dated 28th November 2006, which authorises [the representative’s firm] to represent the proprietor in relation to patents held in his name. ...”

The position could hardly have been clearer.

[1.7] The appeal of Franz Hasse III is therefore admissible.

Appeal of Appellant III, Kwench Systems International LLC

[1.8] For a transferee of a patent to be entitled to appeal, the necessary documents establishing the transfer, the transfer application and the transfer fee must all be filed before the expiry of the period of appeal: see T 656/98 [headnote]. This was not done in the present case, so that as far as the EPO is concerned Franz Haase III was still the proprietor at the date of the notice of appeal.

On any basis therefore, this appeal must be rejected as inadmissible.

Should you wish to downlaod the whole decision, just click here.

NB: This decision has already been reported on Laurent Teyssèdre’s blog.