T 1478/07 – Three Words That Matter

This decision also deals with objections under A 100(c) against the main request and several auxiliary requests.

[6.1] In claim 1 of each of these requests, the coating composition is prepared by a process comprising at least two steps: the first ethylene polymer having a value of melt flow rate MFR12 comprised between 50 g/10min and 2000 g/10min is prepared, the second ethylene polymer having an MFR22 value lower than MFR12 is prepared. Moreover, in claims 1 of these requests, it is specified that the process of making the multimodal polymer contains at least two steps which can be performed in any order (emphasis added by the board). This combination of characteristics was also present in claim 1 as granted.

[6.2] First, the melt flow rate MFR12 of the first ethylene polymer between 50g/10min and 2000g/10min, which is the polymer with low molecular weight since its MFR is higher than the MFR of the second ethylene polymer, is explicitly mentioned in the application as originally filed. However, this MFR for the first ethylene polymer is mentioned in conjunction with the condition that the said first ethylene polymer is made in the first step.

The application states:

“However, it is preferential that in said first step a hydrogen amount is used, leading to a melt flow rate MFR12 of said first ethylene polymer of from 50 g/10min to 2000 g/10min, most preferentially from 100g/10min to 1000g/10min, provided that said first step is performed before said second step.” […].

[The patent proprietor] acknowledged that the disclosure of this feature was such that the first step is performed before the second step […].

[6.3] The question is whether the skilled person with his common general knowledge would have derived directly and unambiguously from the content of the application as filed that the steps of preparation of the ethylene polymers can be performed “in any order”, namely that the preparation of the first ethylene polymers having an MFR between 50g/10min and 2000g/10min can be performed in the second step.

[6.4] The specification makes it clear that the preferred embodiment is to prepare the low molecular weight component first […]. The general principle is however that the steps can be performed in any order […]. It is also stated that when feeding the first ethylene polymer into the mixing step, the melt flow ratio MFR12 of the first ethylene polymer is preferentially from 50 to 2000 g/10min.

[The patent proprietor] argued that it is common general knowledge that the low molecular weight component can be produced in the first or the second step. Therefore, the disclosure of the melt flow rate MFR12 when the low molecular weight component is prepared in the first step automatically also applies to the embodiment in which the low molecular weight component is prepared in the second step. The melt flow rate is a property of the ethylene polymer itself and has nothing to do with the step sequence. Therefore, the skilled person will understand that the same preferred melt flow rate MFR12 of 50g/10min to 2000g/10min will apply if the low molecular weight component is prepared in the second step.

[6.5] In assessing whether an amendment is objectionable or not under A 100(c), care should be taken not to confuse what is to be derived by a person skilled in the art from the content of a disclosure with what is to be derived directly and unambiguously by a person skilled in the art from the content of the same disclosure. The first notion is based on what is generically or conceptually disclosed, the second is based on what is disclosed without ambiguity. Thus, in the present case, if it might have been admitted using the first notion, that one of the obvious possibilities which can be derived from the passage […] which reads:

“the preferred embodiment is to prepare the low molecular weight component first […]. The general principle is however that the steps can be performed in any order […]. It is also stated that when feeding the first ethylene polymer to the mixing step, the melt flow ratio MFR12 of the first ethylene polymer is preferentially from 50 to 2000 g/10min.”

is that the first ethylene polymer having a value of melt flow rate MFR12 comprised between 50 g/10min and 2000 g/10min (ethylene polymer of lower molecular weight) is prepared in a second step, this not the sole possibility, because the application also states that when the first ethylene polymer has a value of melt flow rate MFR12 comprised between 50 g/10min and 2000 g/10min it must be prepared in the first step.

This ambiguity (several possibilities) is an insuperable objection when assessing the allowability of an amendment.

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T 1478/07 – No Need To Hear

I owe the knowledge of this decision, which has not been published on the DG3 site yet, to a kind colleague. Among other things, the decision deals with the question what an Opposition Division (OD) has (or rather does not have) to do when introducing a new ground of opposition.

[5.1] The patent in suit was opposed only on the basis of A 100(a) for lack of novelty and lack of inventive step. The opposition division introduced the ground of opposition based on A 100(c) during oral proceedings (OPs).

[5.2] [The patent proprietor] disputed that this new ground of opposition had been properly introduced into the opposition proceedings, given that it had not been given the opportunity to argue as to whether this new ground of opposition was prima facie relevant. Decisions G 9/91, G 10/91 and T 433/93 were cited in that respect. Failure to respect the right to be heard regarding that issue constituting a procedural violation (A 113(1)) which justified the refund of the appeal fee as well as the remittal of the case to the department of first instance.

[5.3] In view of the content of the minutes of the OPs before the OD and the submissions of [the patent proprietor], it appears that the legal framework of the admissibility of a new ground of opposition was discussed […]. After adjournment of the OPs, this new ground was admitted by the OD […].

[5.4] It cannot be inferred either from the content of decision G 9/91 (or G 10/91) or from decision T 433/93 […] that in order to meet the requirements of A 113(1), the OD must, before discussing the substantive reasons for the objection, give the parties the opportunity to express their views as to the prima facie relevance of the introduction of a new ground of opposition (A 114(1)). In that respect no procedural violation occurred.

[5.5] The board may, however, assess whether the OD exercised its discretion to admit this new ground of opposition in an unreasonable way.

In the board’s judgment, when an objection under A 100(c) is raised during OPs, one of the requirements justifying the introduction of this ground is that the contested amendment has no explicit basis in the application as originally filed.

That is actually the case here since on the one hand the feature that the MFR12 value of the first ethylene polymer is from 50g/l0min to 2000g/l0min is only explicitly disclosed in the application as filed in connection with the additional features that i) an amount of chain transfer agent was used and ii) step 1 was performed first and on the other hand the feature that the melt flow rate MFR22 lower than the first MFR21 not disclosed. This is sufficient to raise a prima facie relevant objection because there are clear reasons to believe that such ground is relevant. This prima facie relevant objection can be reversed based on the arguments presented by the proprietor on the substance of the case.

[5.6] It is concluded that the OD exercised its discretion in an appropriate manner when it decided to introduce the new ground of opposition based on A 100(c) and that no substantial procedural violation occurred. This ground of opposition is therefore de facto in the appeal proceedings.

[5.7] [The patent proprietor] argued that an objection based on A 83 had been introduced during OPs. This also amounted to a procedural violation in accordance with A 113(1), since it had not been aware of the argument in support of this new ground and thus was not prepared to provide an appropriate reply.

[5.8] The arguments of [the patent proprietor] are based on a misinterpretation of the decision at first instance. A 100(b) was not introduced by the OD. The fact that the OD checks whether an amended version of a set of claims as granted as far as the amendments are concerned meets the requirement of A 83 is in line with the requirement of A 101(3)(a). This does not mean that the objection under A 100(b) EPC has been introduced. Therefore, [the patent proprietor’s] request is no longer applicable.

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T 138/08 – Two Will Do

Imagine that you have filed an opposition and that the patent proprietor has made substantive observations, which the EPO has just transmitted to you for information. How much time do you have for reacting? I always presumed that unless there were particular reasons not to do so, the Opposition Division (OD) would wait for four months, the time you normally have to respond to a substantive notification. The present decision has now disabused me of this idea.

[6] The appellant complains that he was not given sufficient time to reply to the observations of the patentee filed in response to the opposition.

On the basis of the documents on file, the circumstances are the following:

− During opposition proceedings the patentee filed observations with letter dated 25 July 2007, received by the EPO on 26 July 2007;

− the letter was forwarded by the EPO for information to the opponent with communication of 6 August 2007 and received by him on 9 August 2007 […];

− the decision in opposition proceedings was signed on 1 November 2007, is dated 21 November 2007, was communicated to the opponent by fax on 19 November 2007, was sent to the opponent by post on 21 November 2007 and received on 27 November 2007.

Starting from the earlier date on which the decision was taken (1 November 2007), the above means that the OD waited 2 months and 21 days from the opponent’s receipt of the observations of the patentee (9 August 2007) before it took its decision.

The question is whether the opponent had sufficient time to comment or, more specifically, whether 2 months and 21 days represent a sufficient time to do so.

The appellant referred to the Guidelines for examination in the EPO (December 2007) E-VIII 1.2 - to be applied by analogy - which stated that the length of the time period explicitly given for reply should be based in principle on the amount of work which is likely to be required to perform the operation in question. The uniform practice adopted by the Guidelines was as follows:

− if simple acts are requested: two months;

− for communications from the OD raising matters of substance: four months.

The appellant argued that in this case four months should have been given, since the communication raised matters of substance.

This view however cannot be shared. The communication of the observations of the patentee was made merely for information (see in the communication: “Please take note”). The OD did not raise any matter of substance in the communication. The opponent was free to decide whether to comment on it or to remain silent. Had he decided to remain silent no act would have been required; had he decided to react to the letter of the patentee, the simple act of sending a request for the time considered necessary for the reply would have sufficed. For that simple act a period of two months as indicated in the Guidelines is considered sufficient by the Board.

The objection of the appellant that the communication of the OD raised matters of substance, as proved by the complexity of the reply of the appellant himself of 22 March 2010, is not convincing since the proof cannot consist in an action lying within the freedom sphere of the appellant.

Accordingly, reimbursement of the appeal fee under R 103(1)(a) is not justified. Remittal to the first instance is justified only in order to maintain the patent on the basis of the version established with the present decision.

So in order to avoid trouble, it might be wise (i) to react quickly, or (ii) if this is not possible, to explicitly ask for time, and (iii) to request oral proceedings, if you have not already done so when filing the opposition.

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T 699/06 – A Bilocation Problem

The present decision goes into some detail to explain why a request for postponement (well, as we shall see, the Board would not use this word) of oral proceedings (OPs) could (should) have been refused.

[1] Article 15(2) RPBA provides as follows:

“A change of date for OPs may exceptionally be allowed in the Board’s discretion following receipt of a written and reasoned request made as far as in advance of the appointed date as possible.”

Some guidance is to be found in the Notice dated 16 July 2007 concerning OPs before the boards of appeal (“the Notice” - last published in OJ EPO, 1/2010, Supplement, pages 67-68, paragraphs 2.1 and 2.2) as to reasons for non-attendance at OPs by a party (not, it must be noted, non-attendance by a representative per se) which may or may not be accepted as sufficient to fix a new date.

[2] It is to be noted that the official texts use the expressions “change of date” and “fix a new date” rather than “postponement”. In the Board’s view this is significant. Postponement of OPs to a later date necessarily has the consequence that the later date becomes unavailable for OPs in another appeal and thus all the appeals pending before the Board in which OPs may be necessary are, however minimally, postponed. This is unfair on those parties in other appeals who do not want postponements but who must thereby wait at least a little longer for OPs and for a decision. This effect on other parties to other appeals is a consideration the Board must take into account in exercising its discretion […]. It is also why the Board, if satisfied that a change of date is necessary, will usually consider first the possibility of bringing forward rather than postponing the OPs.

[3] It is inherent in the discretionary nature of the decision whether or not to change a date for OPs that a request will not simply succeed just because the reasons for it fall within the examples of acceptable reasons in the Notice.

It must be noted that those examples are given as “serious substantive reasons to request the change of date of OPs” ([…], emphasis added). It is significant that they are called “reasons to request the change of date” and not “reasons to allow the change of date”. That can only mean that those reasons, or other comparably serious substantive reasons, are required before a request will even be considered but that such reasons are not in themselves bound to or, according to the circumstances, even likely to result in a change of date. This is supported by case law which shows that one of the exemplified reasons (in that case, pre-booked holidays) may not in itself be sufficient:

“...while holiday is a possible valid basis for a request, it is not necessarily a sufficient reason for postponement. All circumstances of the case and all the criteria referred to in the Notice have to be taken into account by the Board when exercising its discretion” (see T 1102/03 [2]).

[4] The Notice also provides […] that,

“Every request for fixing another date for OPs should contain a statement why another representative within the meaning of A 133(3) or A 134 cannot substitute the representative prevented from attending the OPs.”

Therefore, when the reason for a request to fix another date is based on the non-attendance of a representative, there are two stages in the Board’s discretionary decision. First, it must decide whether the representative in question is prevented from attending. Second, if and when the Board is satisfied that the representative is prevented from attending, it must then consider whether another representative can substitute for the prevented representative.

The [patent proprietor’s] requests to postpone the OPs

[5] Applying these provisions to the present case, the Board had no difficulty in deciding that the [patent proprietor’s] requests, both as originally presented and in their renewed form, did not justify a change of date of OPs.

[6] The reason given for making the original request was that the representative was due to speak at a conference which ran from 12 to 14 April 2010. He did not then give the exact date on which he was due to speak, although it appeared from his later request that this was in fact 13 April 2010 (in fact, the day before the OPs).

Such a commitment - to speak at a conference - is additional to the normal professional responsibilities of a representative. A representative who undertakes such a commitment does so in the knowledge that this will make him unavailable to his clients, and unavailable to appear at any OPs, on the date or dates in question. Therefore, as a reason for changing the date of OPs, it is a reason which by definition results from excessive work pressure - excessive if only because it is a commitment which the representative was not obliged to undertake but which, having undertaken it, makes him unavailable. Excessive work pressure is specifically mentioned in the Notice as a non-acceptable reason […]. In view of the clear meaning of “reasons to request” in paragraph 2.1 of the Notice […], the examples of non-acceptable reasons in paragraph 2.2 are equally clearly examples of reasons which are unacceptable as reasons even to request a change of date. Accordingly, such reasons cannot attract a favourable exercise of the Board’s discretion.

[7] In his renewed request for postponement of the OPs, the representative wrote, with reference to the Board’s communication of 19 January 2010 refusing his original request, that he was surprised that the reasons supporting his previous request were considered insufficient as work pressure reasons, and that he had not intended to convey that his reasons were of a work pressure nature but simply that he could not “be in two places at one time”.

The Board entirely accepts that he did not intend to convey that his original reason (there was only one reason - the conference speaking engagement) was a work pressure reason. However, he should not have been surprised that the Board should view that reason as a work pressure reason. As his later letter put it, he could not “be in two places at one time”: when that situation arises for work-related reasons, then it is quite clearly “excessive work pressure”.

[8] The Board considers it likely that what the representative really meant was that he was surprised that a conference speaking commitment was not regarded as an adequate reason. As indicated above […], the Board cannot see how such a commitment can ever in itself be an acceptable reason for a change of date. Several requests for change of date are based on such engagements - speaking at conferences, lecture tours, attending trade shows, even staffing stands at exhibitions. Such marketing activities are now commonplace activities for professionals such as lawyers, patent attorneys and others who act as representatives and are no doubt considered an important part of their business activities. However, the sheer frequency or importance to representatives of such activities does not make them any more acceptable as reasons to request a change of date. On the contrary, the more they are frequent and/or important, the more must those who undertake them ensure that they do not prevent attendance at OPs (if necessary, by a substitute […]).

No responsible representative would deliberately delay his or her client’s case for a marketing opportunity. If a representative asked a client “Do you mind if I postpone your case while I market my firm’s services to others?” the answer would be obvious. The Board’s refusal to entertain such marketing commitments as reasons to request changes of OPs dates is merely the equivalent answer, not just for itself but also on behalf of other parties and the public […].

[9] The renewed request of the [patent proprietor’s] representative identified a new reason for requesting postponement of the OPs, namely that he had a pre-booked holiday from 9 to 16 April 2010. (Curiously, since his previous reason was that he would be attending a conference from 12 to 14 April 2010, this meant that for three days he would in fact, to use his own expression, be in two places at one time.)

The Notice […] gives pre-booked holidays as an example of an acceptable reason to request a change of date. As already indicated […], that does not mean a change of date is to be allowed without more, but it does mean the request must then be considered in the light of all the circumstances. In the present case the Board assumed at this stage that the new reason could be acceptable and proceeded to the question of substitution.

Substitution of another representative

[10] In a case such as the present, where the putative non-attendance is that of a representative, one of those circumstances is the possibility of substitution by another representative - indeed it is a necessary second step in the Board’s consideration […]. When, regardless of other circumstances, it may be conclusive for the request, it becomes appropriate to consider it once the requesting party has demonstrated an acceptable reason for making the request.

A key factor in the assessment of the substitution question is the time available between, on the one hand, the date of making the request and, on the other hand, the date appointed for the OPs. If the time between those two dates is on any objective view sufficient to allow a replacement representative to prepare adequately then, as regards this consideration, the Board cannot exercise its discretion in favour of a change of date.

(Article 15(2) RPBA requires the request to be made “as far as in advance of the appointed date as possible”; thus, if the request has not been made promptly on receipt of the summons to OPs, the date to be taken for measuring the start of the time period available should clearly be the date when the request could and should have been made. Otherwise, those seeking to delay could circumvent the substitution question by simply waiting until the near the date of the OPs.)

[11] In the present case, the need to consider the question of substitution did not arise on the request as first made although the Board did, in its communication of 19 January 2010 refusing that first request, state that, even if it had been satisfied that the [patent proprietor’s] representative was not prevented from attending, it was not satisfied that another representative could not substitute for him.

In this respect the representative had submitted that his firm’s “Life Science team [were] all committed to attend” the conference at which he was to speak. Thus essentially the same work pressure reason was put forward for the inability of any other representative (at least within the same firm […]) to substitute for the current representative.

The summons for OPs had been sent to the parties with the Board’s letter dated 15 December 2009, thus almost four months before the scheduled date of 14 April 2010 - which was also the last day of the conference. At the date of the communication, there still remained almost three months until the OPs which clearly allowed ample time either to change the date of the representative’s talk at the conference, or to find an alternative speaker, or for another representative to familiarise him- or herself with the case. Moreover, as mentioned above […], it must be incumbent on representatives who undertake marketing activities to ensure that their other duties can be dealt with. Thus to accept a conference speaking engagement without arranging for such duties as may arise to be covered by others must entail a risk. To send all those who might provide such cover to the same marketing event entails the yet higher risk of no-one being able to perform those duties at all.

[12] As indicated above […], when the renewed request to change the date of OPs was made, the Board treated the representative’s pre-booked holiday as an acceptable reason for making the request and thus proceeded directly to the question of a substitute. In this respect, the representative argued that a party has the right to select a representative and, if he is unable to attend OPs, it is unreasonable to insist that he be replaced. The Board agrees entirely with the first statement and disagrees entirely with the second.

A party does indeed have the right to be represented by the representative of its choice. However, that does not then give the selected representative the right to a postponement of OPs by reason of any other commitment he or she may have undertaken. If that was the case, paragraph 2.3 of the Notice would serve no purpose. There is no question of the Board, or anyone else, insisting on a replacement - if a representative has by his own choice made himself unavailable, the Board must exercise its discretion under Article 15(2) RPBA and take account of other factors as well as the selected representative’s convenience. To allow a change of date purely for such convenience would allow one party (indeed, one party’s representative) to make its own arrangements and then to dictate changes to others which would be inherently unfair. No one party can arrogate to itself, let alone one representative arrogate to him- or herself, the management of the Board’s proceedings.

[13] It follows that the Board cannot envisage a combination of the following circumstances as being “exceptional” as required by Article 15(2) RPBA, namely:

(a) the non-availability of a party’s representative (which, if for a non-acceptable reason such as a marketing event, is the end of the matter […] or, if for a satisfactory reason, is only a reason for making the request and still requires consideration of all the circumstances including a possible substitute […]); and

(b) that party’s natural preference for that representative (which is the party’s right but which may not dictate a change of date […]); and

(c) adequate time to instruct an alternative (adequate time being an objective question to be decided on the facts of each case […]).

A request for postponement in such circumstances amounts (without more) to a request to meet the convenience of one person (the unavailable representative) to the possible prejudice of others. To allow such a request would thus be inherently unfair.

[14] As regards the [patent proprietor’s] representative’s additional submissions for non-substitution, the Board could not accept either the age of the patent and/or the advanced stage of the proceedings as reasons for non-substitution - on the contrary, both were self-evidently equally good (if not better) reasons for ensuring the appeal was disposed of without further delay.

As for the submission that there was only one possible substitute in the representative’s firm (not, the Board notes, a “team” who were “all” unavailable as previously submitted) who was also unavailable because he would not only be speaking at the conference as well but also be manning an exhibition stand, the Board’s views expressed above […] apply with the same if not more force.

If European representatives wish to speak at conferences (even with the approval of clients whose cases are thereby delayed), the work of the Boards of Appeal and the interests of their clients’ adversaries and the public should not be affected as a result.

[15] The Board also notes that paragraph 2.3 of the Notice refers to “another representative within the meaning of A 133(3) or A 134”. That is quite clearly not limited to another representative from the same firm as the representative putatively prevented from attending OPs. The question which that paragraph of the Notice addresses is why another representative cannot substitute and not why one of the representative’s colleagues cannot substitute. The question asked is objective and calls for an objective answer; the particular circumstances of the representative’s firm, the availability of others within that firm, the possible inconvenience or cost to that firm or to the party in question are all irrelevant - these are either internal matters for the representative and his or her firm or at most matters which concern only them and their clients.

The inquiry called for by paragraph 2.3 is posited entirely on the non-availability of one European representative or authorised employee and it requires only explanation as to why another European representative or authorised employee cannot take his or her place. The Board sees no scope for reading more into paragraph 2.3.

Consideration of all the circumstances

[16] The Board is obliged to consider requests to change the date of OPs in all the circumstances and not just in the light of the submissions supporting the request. Primarily, this means the board must consider the interests of others. In the immediate context of the present appeal, that means the [opponent].

Of course, if both or all parties to an appeal are agreed that OPs should be postponed, then the Board can in principle agree (see T 1102/03 [2.2]) subject to having notice adequate enough to allow the appointment of OPs in another appeal on the date thereby vacated, so as to avoid any delay to pending appeals.

But, absent any such agreement, the Board has to assume that delay may prejudice other parties and respondents in particular since (unless also appellants) they did not choose to have appeal proceedings. There must be highly persuasive reasons to allow Appellants to delay proceedings they themselves began.

The Board must also consider the interest of parties in other appeals whose cases will be delayed by a postponement […]. It must also consider the wider general public interest in the administration of justice, which can only be served by disposing of appeals as expeditiously as possible, and in having as soon as possible a final decision about the existence or extent of a monopoly right.

[17] Since there was adequate time either for the [patent proprietor’s] representative to change his conference speaking arrangements or for the [patent proprietor] to instruct another representative, the Board was not satisfied that the arguments for a change of date of the OPs, either as originally or subsequently presented, should exceptionally outweigh the other interests it must consider.

Accordingly, both requests for such a change had to be refused. However, since another pending appeal which could be expedited permitted an exchange of dates, the Board took that course. It must be observed such opportunities very seldom arise and are not to be relied on to solve representatives’ availability problems.

This decision leaves a strange impression. The Board finally switched dates but discusses in length why this was a favour rather than a right. It may well be that the postponement (sorry, the change of date) was not justified, but I do not find the Board’s reasoning very convincing. In particular, the “reasons to request” argument (point [3]) and the qualification as “excessive work pressure” (paragraphs [6-7]) sound artificial. I would prefer the Board to bluntly refuse a postponement rather than beat around the bush with far-fetched ad hoc arguments (all the more as the latter then clutter up the case law :-)). Also, I find it weird to see a Board tell a representative that he better take care of his clients rather than doing his self-promotion in conferences. But there are some indications in the text which make me think  that the representative had seriously irritated the Board, which might explain and excuse some of the stranger arguments.

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T 331/08 – No More Lacuna

The present decision deals with an appeal that had been filed via epoline at a time when this was not allowed. We have already seen this situation discussed in the case law, but there are some interesting complements in this decision.

Applicable Law

General

[1.1] The decision of the examining division was dated 7 September 2007 and posted on 19 September 2007. Thus the last date on which a notice of appeal could be filed was two months and ten days after 19 September 2007 (R 78(2) EPC 1973). This is prior to the entry into force of the revised EPC (EPC 2000, entry into force 13 December 2007). Thus the applicable law is EPC 1973.

NB: All articles and rules referred to hereafter correspond to the EPC 1973.

Electronic Filing

[1.2] The pertinent provisions are those set out in the Decision of the President of the European Patent Office dated 29 October 2002 (OJ EPO 2002, 543) and the related Notice from the EPO concerning the electronic filing of documents within the meaning of R 36 dated 3 December 2003 (OJ EPO 2003, 609).

According to Art. 1 of the Notice of 3 December 2003 documents other than priority documents could be filed electronically in grant proceedings. It is however explicitly stated therein that

“This possibility is not yet available in opposition and appeal proceedings; in such proceedings, therefore the electronic filing of documents is not admissible.” (De: “nicht zulässig”, Fr: “pas permis” (emphasis of the Notice).

[2] According to R 36(2) all documents (other than the description, claims, drawing and abstract, i.e. those covered by R 27, R 29 and R 32-35) shall normally be typewritten or printed. R 36(5) provides that the President may nevertheless permit documents filed after filing of the European patent application to be transmitted to the EPO by other means of communication and to lay down conditions governing their use.

[2.1] The Notice of December 2003 thus enacted provisions, as foreseen in R 36(5) for the filing of documents - other than priority documents - during the grant proceedings by “other” means, namely electronic means.

[2.2] Opposition and appeal proceedings were however explicitly excluded from these provisions.

[2.3] Therefore the applicant employed a non-permitted means to file the notice of appeal.

[2.4] Furthermore no confirmation of this electronically filed submission by other (permitted) means was provided.

[3] This situation is in the Board’s view comparable with that forming the basis of T 514/05 […].

[3.1] This decision, which was taken during the period that the Notice of December 2003 was in force, after a detailed analysis, came to the conclusion that pursuant to R 36(5) an appeal filed by non-permitted means of communication, specifically via the epoline® system, could not have any legal effect, absent explicit permission of the President (T 514/05 [10]).

[3.2] Further the payment of an appeal fee did not constitute constructive notice of appeal (T 514/05 [11], with reference to J 19/90).

[3.3] Accordingly the consequence of the use of a non-permitted means for filing the notice of appeal was that no appeal had been filed.

[3.4] By the same logic, the notice of appeal in the case in suit is deemed not to have been filed.

[3.5] This conclusion is analogous to the situation underlying T 971/05 […].

[3.5.1] In that case although a notice of appeal had been filed (by permitted means), the appeal fee was not paid and hence no appeal was in existence (T 971/05 [8]).

[3.5.2] Specifically, this Board held in T 971/05 that according to A 108 for an appeal to come into an existence two prerequisites had to be met:

− The valid filing of a notice of appeal and

− Payment of the appeal fee.

[3.5.3] The consequence of the failure to meet one of these conditions - in the case of T 971/05 payment of the appeal fee - was that there was no appeal in existence.

[3.5.4] In the case in suit the failure to meet the other condition - valid filing of a notice of appeal - leads therefore to the same conclusion.

Request for the Board to confirm that the appeal had nevertheless been filed

[4] In its pleadings […] inter alia the applicant noted that electronic filing of appeals was now permitted and hence that the Board should, in the light of this deem the appeal to have been correctly filed.

[4.1] This request of the applicant cannot be complied with since the Board does not have the power to do this.

[4.2] As explained in […] T 514/05 [7] a Board of Appeal is not entitled to exercise discretionary power to consider whether the appeal, filed by epoline® might be deemed to have been filed since:

− To do so would be tantamount to exercising a legislative power;

− Such legislative power is however clearly delegated in R 36(5), i.e. that provision to which the Notice of 3 December 2003 relates, to another authority within the European Patent Organisation, namely the President;

− Thus pursuant to A 23(3) the Board is precluded from examining whether this purported notice of appeal could be deemed to have been received, since such a procedure would be ultra vires;

− It is immaterial that this means of communication is now permitted for the filing of appeals. At the time in question, i.e. 12 November 2007 this was not permitted, and it is the law and instructions in place at this time which have to be applied to this case.

Aspect of “good faith” or “legitimate expectations”

[5.1] It is true that a number of communications were sent by the office - either from the examining division or the Board relating to the purported appeal.

[5.2] Such communications are however of merely administrative nature and the existence thereof does not prejudge substantive examination of the facts of the case by the Board (T 781/04 [2] and T 781/04 [28]). Furthermore parties cannot shift responsibility for complying with the provisions of the EPC to the EPO (T 991/04 [28]).

[5.3] This Board is of course aware that the Board responsible for T 781/04 held it to be appropriate to exercise the principle of good faith and thus allowed restitutio in integrum, whilst in T 781/04 the Board held that the principle of good faith required that the Board deem the appeal to have been validly filed. However the then prevailing situation with respect to epoline® was different from that existing at the time of the case in suit.

As noted in T 781/04 [10.1-3] and T 991/04 [31] there was - at the relevant time in those cases - no on-screen warning in epoline® that filing of appeals by electronic means was not permitted. Such a warning was however introduced subsequently in the light of a number of problems, as reported in T 781/04 [10.3], i.e. as a consequence of a “lacuna” in the system (see also T 991/04 [31]).

[5.4] This consideration however does not apply in the present case since at the time the applicant submitted the “notice of appeal” the warnings the absence of which was referred to in T 781/04 and T 991/04 were in place both on the website and also on the electronic form to be filed with the submission. These warnings explicitly alerted the users of the system that this was not permitted for filing appeals.

[5.5] Accordingly in view of the manifold steps taken by the EPO to ensure users would be aware of the restrictions placed on the use of the epoline® system, not only by means of the announcements in the OJ, of which it could be expected that a professional representative would be aware but also, as a further precaution, by means of warnings on the website, the Board can identify no justification for application of the principle of “good faith” or “legitimate expectations” to lead the Board to deem the “appeal”, filed by non-permitted means, nevertheless to have been filed, notwithstanding the fact that the Board does not have the competence to do so […].

On the contrary, as held in T 781/04 [10.3] and T 991/04 [28] it is the responsibility of the professional representative to ensure the relevant instructions of the Office are followed and that the appropriate means for making submissions is employed and this responsibility cannot be transferred to the EPO.

[5.6] These considerations are not changed by the fact that in the intervening period electronic filing of appeals has become possible. As explained […] above, the relevant provisions are those in force at the relevant time, not those that came into force at a later time, or which had been in force at an earlier time.

Request for restitutio in integrum

[6.1] As explained above with regard in particular to T 971/05, since no valid appeal was filed within the time limit […] an appeal procedure was never initiated and consequently there are no rights to be re-established.

[6.2] This notwithstanding the Board recalls that according to A 122(1) this provision is applicable to an applicant or proprietor who “in spite of all due care required by the circumstances having been taken” fails to observe a time limit (emphasis of the Board).

[6.3] Although in a number of cases involving electronic filing of documents in the appeal proceedings e.g. that underlying the aforementioned T 781/04 the Board was prepared to grant restitutio in integrum, […] these findings relied on the observation that that at the relevant time there was a “lacuna” in the EPO system since the epoline® website contained no warning or reminder that electronic filing of appeals was not permitted (T 781/04 [10.1]). T 781/04 (and T 991/04) - both dating from the latter half of 2005 - note that the problem had in the meantime been addressed by introduction of a warning on the website.

[6.4] However in the case in suit the applicant was made aware of the restrictions on the use of the epoline® system

- over and above the announcements in the Official Journal:

− By means of the warning on the website and

− was also required as a prerequisite for making the submission to sign – electronically - a document which stated unequivocally that the submission was not in relation to an appeal […].

[6.5] Accordingly the evidence is that the applicant in electing to file a notice of appeal by non-permitted (i.e. electronic) means overlooked not only the information published in the official journal but also ignored two warnings, one of which was on the electronic document signed by the representative.

[6.6] The Board is unable to consider this conduct, involving as it does a triple failure, to be evidence of the exercise of “all due care” in filing the appeal, and thus finds that the availability of the provisions of A 122(1) in respect of the filing of the notice of appeal is precluded.

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

T 945/09 – Doctors Are Talkative

The present decision deals with an interesting case of prior public use in the context of clinical studies. In order to come to a conclusion the Board had to consider the question of how scientific articles are elaborated and tackle the problem of who should bear the burden of proof. Finally the question of whether a patient is bound by an implicit confidentiality agreement turns out to be relevant.

The opponent had pointed out that the patent (priority date : December 23, 1996) lacked novelty because of a prior public use reported in document D3, i.e. an article in a scientific journal. This article reported on the use of “taurolidine 2% as an antimicrobial lock solution for prevention of recurrent catheder-related bloodstream infections.” There was an indication in document D3 that the article had been received for publication on May 28, 1997 and was accepted for publication on November 18, 1997.

The OD concluded that on the basis of the information reported in document D3 the use of 2% taurolidine solutions to fill catheters started before the priority date of the contested patent, in a time-frame which spanned July 1995 and October 1996, depending on whether the date when the article was submitted or finally published was taken into account. This use occurred before the priority date.

However, the OD also concluded that all information concerning the use of taurolidine as catheter lock available to the acting medical team, to the patent proprietor (supplier of taurolidine) and to the patient was covered by an implicit obligation of confidentiality which stemmed from the specific circumstances of the case. In this situation the burden of proof was upon the opponent to establish that no implicit obligation of confidentiality existed, or that notwithstanding this obligation the invention was disclosed to the public. The opponent had not discharged this burden.

The Board sees things in a different light:

[3.1] In one of the alternative embodiments the claimed subject-matter of the patent in suit relates to

− the use of taurolidine in the manufacture of a solution

− for preventing infection and sepsis

− in a delivery system for administration of a desired liquid material to a patient,

− wherein said solution is employed to fill the system between each said administration

− so as to act as an antimicrobial seal

− serving to prevent said infection and sepsis.

[3.2] Document D3 teaches

− the use of taurolidine in the manufacture of a solution […]

− for preventing infection and sepsis […]

− in a delivery system for administration of a desired liquid material to a patient […],

− wherein said solution is employed to fill the system between each said administration […]

− serving to prevent said infection and sepsis […].

The person skilled in the art of total parenteral nutrition at the priority date of the patent in suit knows that the catheter lumen must be sealed during times when it is not used for administration of the nutrient, and refers to it as the lock-technique. This seal may be performed using heparin solution as is referred to in document D3 […].

Thus, the remaining feature

− so as to act as an antimicrobial seal

is also inevitably comprised in the teaching of document D3.

Consequently, the teaching of document D3 in the form of the reported use of taurolidine solution as a lock represents all the features of claim 1 of the patent in suit.

[3.3] Concerning the question of when this teaching of taurolidine-lock was performed, and in particular when it began to be performed, there is prima facie the clear-cut normal case that a paper is ready before it is sent to a journal for publication and there is normally no need for substantial amendments after the date of receipt. First there is the record of a success, then the idea and realisation of publication follow.

In the current case there is evidence for the particular date of receipt at the bottom of page 242 of document D3, left column: “Received for publication, May 28, 1997”.

Since any decision to publish a paper inevitably must lie in the period before its receipt for publication, the authors of document D3 must have decided to publish their experience in the time before May 1997. Following the time frame proposed by the [patent proprietor], this would have been just shortly after they had removed the catheter and implemented systemic antibiotic treatment (ten months after March 1996, which was January 1997) - stripped of the experience of a further 12 months free of infection.

According to these considerations, the board is satisfied that the starting date for the use of the taurolidine-lock can be set at 22 months before the date of receipt for publication, i.e. July 1995.

Doubting this normal sequence of actions, under the circumstances of the current case as set out, requires tangible evidence and not just one example of differing experience in another case and statements based on several mere assumptions (see e.g. following point [4.2] of this decision). The maxim “reus in excipiendo fit actor” applies here. The burden is on the [patent proprietor] to show that the actual facts and their sequence in truth were different.

[3.4] In document D3 it is pointed out that

“Ten months before the last infection, the patient was instructed to instil 1.5 mL taurolidine 2% daily into his central line after finishing his HPN (home parenteral nutrition) infusion and has continued to do so 2 years to date” (parenthesis inserted by the board).

Thus, the teaching according to claim 1 of the patent in suit was used by a patient while having “home parenteral nutrition” (HPN). Such a patient, aged around 30, after his long history of complications leading to multiple replacements of the catheter […] usually knows what is happening to him and he is interested in the nature of all actions intended to bring him relief. In addition, the “evaluation of the patient’s protocol of site care” mentioned in document D3 […] would not have been possible without exact explanation for instance of the purpose of the daily instillation of 1.5 mL of heparin solution. Consequently, it is also to be seen as a prerequisite that the intention connected with the heparin replacement by 1.5 mL of taurolidine solution […] was sufficiently explained to him.

In addition, there is no remark in document D3 indicating anything to the contrary.

Therefore, the board has to base its considerations and conclusions on the knowledge of the patient being clear and concise enough that he could take notice of the technique used after replacement of heparin-lock by taurolidine-lock, representing the teaching of claim 1 of the patent in suit.

There was also no reason for him to treat this knowledge as a secret, because at that time the acting doctors simply tried to apply taurolidine of whatever provenance using a technique they derived freely and easily from the state of the art common to them at that time […]. Obviously, they never saw anything special about that treatment, and consequently there is no indication of confidentiality in document D3.

[3.5] Accordingly, the board concludes that this teaching was performed beginning from July 1995 in the full knowledge of the patient without any obligation of confidentiality and thus was publicly available before the priority date of the patent in suit.

[4] In these circumstances the arguments of the [patent proprietor] cannot lead to success.

[4.1] To the extent that the [patent proprietor] calls for standards for a chain of evidence and arguments on the basis of the balance of probability, the board sees the argumentation of the appellant as being based on an indicative document, whereas the [patent proprietor] itself tries to establish a chain of evidence and arguments to cast doubt on a document which prima facie appears to be decisive. Thus, the required standards have a priori to be applied to the arguments of the [patent proprietor].

[4.2] The [patent proprietor] concludes from the age 29 mentioned at the beginning of document D3 and the following series of episodes of catheter-related bloodstream infections (CRBSIs) and line changes that the letter of authorisation dated 12 March 1996 (document D20b) is related to the same patient mentioned in this letter as “HP” at the age of 30. Since, as reported in documents D12 and D20a, it was the first shipment of taurolidine from the [patent proprietor] to the Canadian team after a long break, the [patent proprietor] draws the further conclusion that there were no reserves from the last shipment, and the beginning of the taurolidine treatment of the patient reported in D3 thus could not have started before this shipment of March 1996. Disclosure of document D3 was consistent with this view on the basis of a simple update before printing.

But this chain of various indicia, put together from different documents that are not all known in their full context, together with the attempt to establish the identity of the patient through indirect conclusions, is not well-founded enough to cast doubt on the straightforward starting date of taurolidine lock treatment of catheter-related bloodstream infections derived from the disclosure of document D3. In particular, the mere statement that there was an amendment of the text of document D3 is not sufficient to make such an event a reality.

[4.3] The fact that the taurolidine-lock treatment at least at the beginning of the last twelve months (“New tunnelled subclavian” from table 1 of document D3) was accompanied by systemic therapy with vancomycin and was maybe in parallel at any time with taurolidine as an additive to the nutritional solution (Ninewell’s method) is irrelevant with respect to the clear intention of the Canadian team to interrupt the pattern of catheter-related bloodstream infections by use of the taurolidine-lock technique. The test was made using the taurolidine-lock and in full awareness of the problems of the patient with regard to repeated sepsis originating from the catheter and with the intention of fighting this problem by using this lock technique […]. Addition of systemic vancomycin occasionally during this episode merely underlines that the lock-technique per se was directed to fight the sepsis originating from the catheter and not systemic sepsis.

Finally, document D3 even reports the authors as being convinced of the success of their use of antimicrobial taurolidine-lock with respect to infection being catheter-related […].

[4.4] Since the [patent proprietor] no longer maintains its argument that a real confidentiality agreement existed between itself as a supplier of taurolidine and the Canadian team as user, and since it merely affirms that confidentiality was inherent, only this inherency is to be assessed, in particular in relation to the decision of a technical board of appeal cited by the [patent proprietor] (T 1057/92):

In the cited decision the acting doctor is held not to be an appropriate witness to state what information was public […]. In the current case, however, it is sufficient that the patient was aware of the treatment he received, and public prior use does not depend on the doctor being a witness. In addition, in the cited decision novelty was discussed with regard to whether a trace of another compound was present or absent (see point [5] of the decision), while in the current case the straightforward use of a compound as such was crucial for assessment of novelty.

Moreover, the action in the Canadian hospital of using the taurolidine-lock was not typical of a clinical or even an experimental approach because it was dictated by the instant necessity to help a patient in a very desperate situation and thus had not been planned systematically as a scientific experiment.

[4.5] Thus, the subject-matter of the sole request does not meet the requirements of A 54.

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

Once more, great minds thought alike: the decision was reported almost simultaneously on Le blog du droit européen des brevets.

W 4/09 – Nothing Special

I do not resist the temptation to report what might well be the last W decision to be published. Under the EPC 2000, PCT protests are no longer entrusted to the Boards of appeal, but apparently there still were some residual files awaiting treatment. (It should be noted, however, that the decision, although published recently, was taken on July 1, 2009 already, by a Board chaired by Ms. Kinkeldey.)

The decision concerns the international application published as WO 2008/121132 and having the title “Gene expression profiling for identification, monitoring and treatment of prostate cancer”.

Independent claim 1 read as follows:

“1. A method for evaluating the presence of prostate cancer in a subject based on a sample from the subject, the sample providing a source of RNAs, comprising: a) determining a quantitative measure of the amount of at least one constituent of any constituent of any one table selected from the group consisting of Tables 1, 2, 3, and 4 as a distinct RNA constituent in the subject sample, wherein such measure is obtained under measurement conditions that are substantially repeatable and the constituent is selected so that measurement of the constituent distinguishes between a normal subject and a prostate cancer-diagnosed subject in a reference population with at least 75% accuracy; and b) comparing the quantitative measure of the constituent in the subject sample to a reference value.”

There were four more independent claims and 18 dependent claims. All the independent claims refer to the Tables 1 to 4, each of which contains dozens of genes.

The EPO acting as ISA informed the applicant in an invitation under Article 17(3)(a) PCT and Rule 40.1) PCT that the application did not comply with the requirement of unity of invention (Rule 13.1 PCT) and invited the applicant to pay within a time limit of one month 290 (!) additional search fees.

The applicant paid one additional search fee under protest.

[6] According to Rule 13.3 PCT the determination of whether a group of inventions is so linked as to form a single inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. […]

[9] The board agrees to the ISA’s finding in the invitation to pay additional fees that the use of “constituents” or marker genes that are differentially expressed in healthy subjects and in subjects suffering from prostate cancer was known in the state of the art.

Indeed, document D1 discloses methods and compositions for gene expression profiling of prostate cancer marker genes based on quantitative RT—PCR, suitable for assessment of the presence of prostate cancer, as well as prognosis, progression and recurrence following therapy […]. The document particularly discloses e.g. ADAMTS1, EGR1, IGFBP3, JUN, MCAM and NRAS as marker genes, suitable for such expression profiling […].

Similarly, document D2 discloses expression profiling of ca. 26.000 genes (amongst them Muc1), allowing sub-typing of prostate cancer, progression prognosis and recurrence prediction […].

Also document D3 discloses expression profiling of 12.625 genes, including FOS (table 1), allowing the prediction or recurrence of prostate cancer with 90% and 75% accurancy (sic), based on a so-called “gene expression—based recurrence predictor algorithm” […].

Document D5 discloses profiling of prostate cancer gene expression (291 genes) by quantitative real—time RT—PCR and reveals 46 genes which are differentially expressed in prostate cancer, and four which are especially suitable for assessment of progression and recurrency […].

Similarly, document D6 discloses gene expression profiling and the identification of 277 genes which are differentially expressed between prostate cancer and normal tissue, as measured by quantitative RT—PCR. This allowed prognosis and recurrence prediction […].

[10] In view of this prior art, the technical problem underlying the two searched inventions was the provision of alternatives to the known “constituents” or marker genes that are differentially expressed in healthy subjects and in subjects suffering from prostate cancer. As solutions to this problem the first searched invention provides the ABCC1 gene and the second searched invention provides the CDH1 gene.

[11] The board cannot recognise structural characteristics or effects common to the two genes provided according to the searched group of inventions common to all claims which go beyond that they are differentially expressed in healthy subjects and in subjects suffering from prostate cancer and could hence represent “special technical features” within the meaning of Rules 13.2 and 13.3 PCT. Therefore the board must conclude that the solutions to the above technical problem as provided by the two searched inventions do not share a technical relationship involving one or more of the same or corresponding special technical features in the sense of Rule 13.2 PCT a posteriori.

[12] The above analysis of prior art cited in the partial search report provided by the ISA, thus establishes that the technical relationship as defined above between the two searched inventions does not involve “special technical features” and can therefore not provide unity of invention in accordance with Rule 13.2 PCT.

[13] The applicant has argued that the ISA had failed to search the invention as defined in the claims and specification and that the restriction of the primary invention to a single gene was improper.

[14] The board notes however, that, as can be taken from the wording of independent claims 1 to 4, the claimed methods concern “determining a quantitative measure of the amount of at least one constituent of any constituent (of any one table selected from the group consisting) of Tables 1, 2, 3, and 4 as a distinct RNA constituent” (claim 1) or similarly “determining a quantitative measure of the amount of at least one constituent of any constituent of Tables 1, 2, 3, and 4 as a distinct RNA constituent” or similarly “at least 1 constituent from Tables 1, 2, 3, and 4 (claims 2 to 4) (emphasis added by the board). The kit of claim 23 is stated to be “comprising at least one reagent for the detection or quantification of any constituent measured according to any one of claims 1 to 22”. The board therefore also concurs with the ISA that both the identified invention relating to gene ABCC1 and the invention defined by the applicant with respect to the CDH1 gene […] are subject-matter of the claimed invention.

[15] In addition the board notes that the wordings of the claims do not mention statistical methods (e.g. stepwise logistic regression analysis) to analyse the expression levels of genes that had been implicated in ovarian cancer in a sample isolated from a subject. Nor do the claims commonly refer to a cut off of 75% classification accuracy for selecting gene models capable of distinguishing between the two subject groups or gene models disclosed in tables 1A-4A of the application as published which recites all of the possible one- and two-gene combinations (i.e. gene models) for the genes shown in tables 1 to 4, capable of distinguishing between healthy, normal subjects and prostate cancer subjects with at least 75% classification accuracy using the claimed methods. Only for this reason therefore the further arguments of the applicants that the search should not have been restricted to one gene must fail.

[16] As a consequence of the above considerations the two groups of inventions searched by the ISA are not so linked as to form a single inventive concept. Consequently, the application is considered not to comply with the requirements of unity of invention under Rule 13.1 PCT, and the invitation to pay additional fees with respect to the invention identified in relation to the DLC1 gene was justified.

The protest under Rule 40.2(c) PCT is dismissed.

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

T 1491/07 – Not Quite Fresh

The present decision deals with the appeal of the opponent after the Opposition Division (OD) had maintained the opposed patent in amended form. The opposition had been filed on the ground of lack of novelty and inventive step. During the oral proceedings (OPs) before the OD the opponent had withdrawn the objection of lack of novelty against the set of claims that the OD then found to be patentable. The decision contained a short statement indicating that the OD found the request to be novel.

During the written phase of the appeal proceedings, the opponent argued that the claims as maintained were lacking novelty over late filed document D4. The patent proprietor pointed out that the opponent had withdrawn this ground and that, as a consequence, the ground of lack of novelty had to be considered as a fresh ground that could only be introduced with the patent proprietor’s agreement.

The Board does not think so, and makes us delve into some good old case law.

*** Translation from the French ***

[1.1] The Board considers the appeal to be admissible and the [patent proprietor’s] arguments to be unfounded, for the following reasons:

[1.1.1] In the present case the ground of opposition based on a lack of novelty initially was part of the notice of opposition. During the OPs before the OD the [opponent] has made a declaration according to which it did not maintain this ground […].

[1.1.2] According to decision T 274/95 […] a ground of opposition which is substantiated in the notice of opposition but which is subsequently not maintained before the OD, if sought to be re-introduced during appeal proceedings is not a “fresh ground of opposition” within the meaning of opinion G 10/91, and may consequently be re-introduced into the appeal proceedings without the agreement of the patent proprietor, in the exercise of the Board of Appeal's discretion. In the case underlying this decision the ground of opposition based on an inadmissible extension (A 100(c)) had been substantiated in the notice of opposition but during the OPs before the OD the opponent declared that it did not maintain this ground. The fact that the OD had not dealt with (abordé) this ground in its decision had no impact on the above finding.

[1.1.3] According to decision T 877/01 the Board has examined the ground of opposition – based on an inadmissible extension (A 100(c)) - of its own motion. This ground of opposition had been substantiated in the notice of opposition but during the OPs before the OD the opponent has declared that it would not maintain this ground. In its decision the Board referred to opinion G 10/91 and decisions T 274/95 and T 520/01 and found the re-introduction of this ground during the appeal proceedings to comply with these three references - as a consequence, the re-introduction of the ground into the proceedings can be authorised without the agreement of the patent proprietor – even if the opponent has not introduced it in its statement of grounds of appeal.

The present Board is of the opinion that there is no reason to deviate from this case law in the present case. Consequently, the ground of lack of novelty does not constitute a fresh ground of opposition within the meaning of opinion G 10/91.

[1.1.4] Decision T 520/01, which was cited by the [patent proprietor], concerns a case that differs from the present case. The ground of opposition (A 100(b)) had been substantiated in the notice of opposition and was not maintained by the sole opponent, who had made a corresponding declaration during the OPs before the OD, but the OD had not dealt with (abordé) this ground in its decision, and consequently the Board – following opinion G 10/91 – had considered that the re-introduction of said ground during the appeal proceedings constituted “a fresh ground of opposition” within the meaning of G 10/91, which, as a consequence, could only be admitted with the agreement of the patent proprietor.

[1.1.5] However, in the present case, the OD had dealt with the ground of lack of novelty in the contested decision […].

Hmm ... My understanding from all this is that the patent proprietor cannot hinder the Board from raising anew a ground that had been withdrawn if the OD has expressed its opinion on that ground in its decision. All decisions cited above appear to agree on this conclusion, which applies in the present case.

The situation is not so clear when the OD has not made any statement on that ground. T 274/95 does not require such a statement (it ignores the question), whereas T 520/01 sees the need for such a statement. 

I found it interesting to check what T 520/01 had to say on T 274/95:

“[1.9] In Decision T 274/95 the circumstances may seem similar to those of the present case. The Board admitted the ground into the appeal proceedings on the basis that the ground had been fully argued pursuant to R 55(c) and that the opinion G 10/91 was concerned with grounds that had not been substantiated in accordance with R 55(c). As set out in point [11(c)] of their decision, the Board considered that the ground was not sufficiently relevant to prejudice the maintenance of the patent which would justify rejection of the ground as inadmissible. In view of this, and the fact that the ground was considered to have “limited extent”, the Board decided to admit the ground and then to reject the ground for substantive reasons. No remittal was necessary and the proceedings were not delayed. In this result T 274/95 differs from the present case.”

Also, T 877/01 [4] has a statement on both T 274/95 and T 520/01 (my translation from the German):

“… T 520/01 linked the question of whether in such a case the ground of opposition can be taken up afresh (wiederaufgenommen) in the appeal proceedings without the agreement of the patent proprietor, to the additional requirement that the OD has made statements on (Stellung genommen) the ground of opposition in the contested decision. However, in the present case the contested decision […] comprises such a statement, so that even according to T 520/01 there is no objection to a re-introduction of the ground of opposition under consideration. Moreover, it is irrelevant whether a ground of opposition that has been taken up afresh by the Board had been mentioned in the statement of grounds of appeal or not, because even here the principle that the Office has to examine of its own motion applies: the EPO is not limited to facts, evidence and arguments of the parties (A 114(1)). Decision T 274/95, which has been cited by the [patent proprietor] does not say otherwise. In this case the Board found that it could examine and decide on a ground of opposition, which was not new, without the agreement of the patent proprietor. There were no other requirements. In particular, the question of whether the opponent or the Board takes up the ground afresh does not play any role in case T 274/95.”

If you need more of this stuff, have a look at the Case Law Book, VII D 3.2.3 c) ii) (page 793 et seq. in the English version).

Should you wish to download the whole decision (in French), just click here.

T 641/07 – Surviving In The Jungle Of Standards

Claim 1 as granted read:

Use of organic fibres having a melting point smaller than 300°C, an average length 1 greater than 1 mm and a diameter Ø not exceeding 200 μm, in an ultrahigh-performance concrete in order to improve the fire resistance of the concrete, the amount of organic fibres being such that their volume ranges between 0.1 and 3% of the volume of the concrete after curing and the concrete having a characteristic 28-day compressive strength of at least 120 MPa, a characteristic flexural strength of at least 20 MPa and a spread value in the unhardened state of at least 150 mm, these values being given for a concrete stored and maintained at 20°C, said concrete consisting of a hardened cementitious matrix wherein metal fibres are dispersed, which is obtained by mixing, with water, a composition which comprises, apart from the fibres:

(a) cement;

(b) aggregate particles having a particle size D90 not exceeding 10 mm;

(c) pozzolanic-reaction particles having an elementary size ranging between 0.1 and 100 μm;

(d) at least one dispersing agent;

and meeting the following conditions:

(1) the percentage in weight of water based on the combined weight of the cement (a) and of the particles (c) lies within the 8-24% range;

(2) the metal fibres have an average length l1 of at least 2 mm and an l1/Ø1 ratio of at least 20, Ø1 being the diameter of the fibres;

(3) the ratio, V1/V, of the volume V1 of the metal fibres to the volume V of the organic fibres is greater than 1 and the ratio, l1/l, of the length of the metal fibres to the length of the organic fibres is greater than 1;

(4) the ratio R of the average length l1 of the metal fibres to the size D90 of the aggregate particles is at least 3;

(5) the amount of metal fibres is such that their volume is less than 4% of the volume of the concrete after curing.

The request based on this claim was rejected by the Opposition Division which considered that the measurement of the spread value in the unhardened state was not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. The patent proprietor filed an appeal against the revocation of the patent.

The Board first establishes that the skilled person reading the patent specification is enabled to reproduce the claimed invention. It then goes on:

*** Translated from the French ***

[2.1] According to the case law of the Boards of appeal, when the definition of an invention refers to one or more parameters – such as here : the 28-day compressive strength, the flexural strength and the spread value in the unhardened state – the skilled person has to be able, not only to carry out the invention over all its claimed extent, but also to check whether said parameters are complied with when the invention is carried out (au cours de son exécution).

[2.2] Considering the two parameters that apply to the concrete after hardening, i.e. the compressive strength and the flexural strength, it has not been contested that the skilled person can check these values when the invention is carried out. In view of the fact that, moreover, the patent specification […] describes the method allowing to determine the numerical values of these parameters in a way that is presumed to be complete, the Board does not see any reason to doubt their validity.

[2.3] As far as the third and last parameter is concerned, the [opponent] has not denied that a concrete having a spread value in the unhardened state as claimed – i.e. of at least 150 mm – can be prepared. However, it firmly contested that the skilled person is enabled to check the value in the light of the pieces of information contained in the patent specification.

[2.4] The Board notes that considering the checking of this parameter, the sole information contained in the patent specification is limited to the indication that “the spread value is measured by the shock table technique (20 blows) according to the standards ASTM C320, ISO 2768-1, EN 459-2” (page 8, lines 37 and 38).

[2.5] Considering this sole indication, the [opponent] has pointed out that the ASTM C 320 standard does not correspond to any listed standard, that the ISO-2768 standard did not concern concretes but tolerances for linear and angular dimensions without individual tolerance indications, and that the EN 459-2 standard concerned measurement methods for building limes. Consequently, none of those standards described a method for measuring the spread value in the unhardened state of a fresh concrete using the shock table technique (20 blows).

[2.6] Notwithstanding the fact that none of the cited standards explicitly refers to a measurement of said spread value, the Board notes that the relevant question is not whether, when taken as such, the information provided in lines 37 and 38 of page 8 of the patent allows the skilled person to check said value, but whether this information, when associated with the global content of the patent specification, allows him to check [the value].

[2.7] When answering this question, it first has to be said that the skilled is the concrete specialist and it is clear that he is aware of the standards that apply to the domain under consideration.

This is why – in agreement with decisions T 171/84, T 226/85 and T 203/83 (sic), which state that the skilled person is able to recognise that there is an error in the specification and rectify it using his knowledge – the Board has no doubt to conclude in the present, case where the error is simply due to the inversion of two figures, that the skilled person is able to identify without any difficulty the error of transcription in the reference to standard “ASTM C 320” and rectify it to read “ASTM C230”, without any undue effort being needed for this rectification.

[2.8] The [opponent] has pointed out that regardless of the above mentioned error in the reference to standard “ASTM C320”, the skilled person would nevertheless have been dissuaded from using “corrected” standard ASTM C 230 because this standard (see document D12) does not describe the measurement of the spread value in the unhardened state of fresh concrete by the shock table technique (20 blows) but rather provides a “flow table” allowing to evaluate the consistency of mortars based on hydraulic cements. The [opponent] added that the terms “flow” and “spread” and “mortar” and “concrete”, respectively, were not synonyms and that D12 does not describe 12 blows, as in the patent, but 25 drops.

The Board cannot follow these arguments because the opposed patent describes that the ultra high performance concretes “conventionally have a spread value of at least 150 mm, […] the spread value being measured by the shock table technique, a standardized technique used in general for mortars” (emphasis by the Board). Thus the skilled person reading the patent specification would receive the information that a technique belonging to the domain or mortars – and not concretes – is to be used for determining the spread value under consideration. As far as the terms “flow” and “spread” are concerned, it is true that they are not interchangeable in the absolute. However, as the ASTM C230 standard aims at measuring the consistency of mortars and as the term “spread” is used in the same context for concretes in the patent, the skilled person would easily recognize the term “flow” to be a synonym for “spread”. The fact that the patent indicates a number of blows that differs with respect to the ASTM C230 standard does not make it incompatible with the latter, because the indication of a number of blows that differs from the number given in said standard makes it abundantly clear that the standard is not to be followed literally but has to be carried out in a different way, in particular by applying a number of blows that is different from the number given in the standard. Anyhow, as explained hereafter (paragraph [3.2]), if the skilled person had any doubt as to how many blows were to be applied, he would only have to repeat one of the examples of the patent and to check whether the spread value obtained corresponds to 20 blows or a different number of blows.

[2.9] The [opponent] has also pointed out that the skilled person reading the patent specification would also be dissuaded from using the other standard cited, i.e. standard EN 459-2, because it concerns building limes and does not describe how a shock table (20 blows) is to be used. It rather describes how to use a jolting flow table (15 blows) in order to measure the diameter of flow of a lime mortar.

The Board does not share this opinion. It cannot be denied that that the shock table measuring technique is different from the jolting table technique – as can be seen from the existence of a specific standard for measuring the spread of fresh concrete by the shock table technique, i.e. standard EN 12350-5 (D5) – but it is clear for the skilled person that the latter standard is not used in the patent because it requires a truncated cone diameter that is much greater (200 mm) than the spread values illustrated by the examples (at least 150 mm).

The Board is of the opinion that the reader of the opposed patent would not be dissuaded from consulting standard EN 459-2, for the same reasons as those mentioned above under point [2.8], and more particularly because the patent mentions that “the spread measurement uses a technique related to mortars” […] Yet it is a mortar that is used in the “flow” value measurement according to EN 459-2. […]

[2.10] Based on these arguments, the Board comes to the conclusion that the work to be supplied by the skilled person in order to determine that it is the devices for measuring the flow diameter of mortars disclosed in the standards ASTM C230 and EN 459-2 which are used for measuring concrete spread values according to the impugned patent, does not amount to an undue burden. As far as standard ISO 2768-1 is concerned, it (as well as standard ASTM C230) being cited in standard EN 459-2 […], the skilled person would have easily recognized that its citation in the patent was related to measurement tolerances for the devices used in the two other standards and not to measurements of the spread values of the concrete.

[2.11] The experimental report D19 filed together with the notice of appeal summarizes the spread value measurements carried out on a concrete that is close to the concrete of example 4 of the patent, using both the flow table described in standard ASTM C230 and the flow table described in standard EN 459-2.

The [opponent] has contested the results of D19 by pointing out that there were major differences between the concrete composition according to example 4 of the revoked patent and the composition according to D19, in particular as far as the diameter of the metallic fibres (D19 : diameter: 175 μm ; example 4 of the patent: 200 μm) and the mixer (patent : Eirich RV02 type mixer, having “high turbulence with high turbulence and rotation of the vessel” […]; D19 : Rayneri type mixer, which, according to the [opponent] is a “much simpler” mixer).

The Board does not contest that the differences may have an influence on the measured spread value but notes that the concrete formulation according to D19 – although slightly different from that of example 4 of the patent – complies with the subject-matter which claims 1 and 16 intend to protect. Moreover, as the [opponent] has not provided any tangible evidence for its objections raised against document D19, the Board does not see any particular reason to doubt the validity of the results that are summarized in this experimental report. As the spread values measured with the flow tables described in both standards are substantially identical (212.5 mm / 212 mm), the Board accepts D19 as proof that both measurements methods mentioned in the contested patent lead to the same results.

The argument of the [opponent] according to which the concrete sample of D19 has undergone 15 blows – instead of the 20 blows mentioned in the patent – is not accepted by the Board because the [patent proprietor] has explained during the oral proceedings that the values that have led the [opponent] to calculate 15 blows were due to a transcription error of the operator. As there was no proof to the contrary, the [patent proprietor’s] argument is accepted.

Nor does the Board follow the argument according to which the cone used for measuring the spread value did not comply with European standard NF EN 459-2 (D13FR) because despite the mention that said cone had to be manufactured from a metal that could resist the corrosive action of the mortar (stainless steel, brass), the Board accepts the technical explanation provided by the [patent proprietor] according to which the duration of the contact between the aluminium mould and the concrete is so short that the influence on the measurement, if any, is tiny. […]

[3.1] Taking into account the above, the only question that remains to be answered is whether, when the above parameter is measured, the skilled person is able to identify the number of blows (or shocks) to be undergone by the device used for measuring the spread value in the unhardened state of a fresh concrete, i.e. one of the flow tables described in standards ASTM C230 or NF EN 459-2.

In order to answer this question, the Board first of all points out once again that – as mentioned above – the examples of the contested patent can be reproduced and that the skilled person is enabled to reproduce them simply by reading the patent specification.

In this context, the skilled person will only have to: first, prepare a concrete according to the claimed invention, by reproducing one of the examples of the contested patent, and secondly, to check whether the spread value of the concrete prepared corresponds to a measurement carried out by applying 20 blows to said measurement device – as mentioned in […] the patent specification – or, alternatively, whether said value corresponds to a measurement carried out by applying 15 or 25 blows to the same device, such as indicated in standards NF EN 459-2 and ASTM C230 cited above.

In the present case the Board is of the opinion, very much as in a similar case having led to decision T 485/00 [1.6] that such a checking procedure – where, in order to identify the measuring method for a parameter, the skilled person only has to reproduce one of the examples of the patent and to compare the value obtained for said parameter to the value specifically described in the patent – cannot reasonably be considered to be an undue effort.

From the above the Board concludes that the instructions provided in the patent are sufficient for the skilled person to check the spread value in the unhardened state of a fresh concrete.

The case was then remitted to the first instance for further processing.

Should you wish to read the whole decision (in French), just click here.

NB: This decision has also been discussed on Laurent Teyssèdre’s blog just yesterday. 

For more decisions on standards and sufficiency, just click here or here.