T 1985/09 – He Who Rows Wind Reaps A Refusal

The present decision deals with the refusal of a divisional application by the Examining Division (ED).

Claim 1 of the application read:

Rotary windrower (1) with swath circles that are driven about essentially vertical axes, arranged staggered behind one another in travelling direction (F) and supported on the ground by rotating wheels, for raking up the harvested crop, wherein the swath circles can be pivoted up from the working position into a transport position and vice versa, wherein the swath circles are connected to an underframe (5) attached to radial arms in joint axes, characterised in that the rotary windrower (1) is formed by swath circles (2,2’,3,3’,4,4’) forming at least three staggered rows (10,11,12), so that at least one basic structure (8) is arranged between the leading staggered row and the rear staggered row (10,12) and in that the distance (61) between the two staggered rows (10,11) that are foremost in the travelling direction (F) is smaller than the distance (62) between the two staggered rows (10,12) that are rearmost in the travelling direction (F).

*** Translated from the German ***

[2.1] According to the established case law, the assessment of whether a divisional application complies with the requirements of A 76(1) with respect to the former parent application is carried out according to the same principles that have been developed for A 123(2), see Case Law of the Boards of Appeal, 5th edition, 2006 (hereinafter “Case Law”), section III.F.1.3, or G 1/05 [5.1]. Thus the subject-matter of the divisional application has to be directly and unambiguously derivable from the former (parent) application, the content of which is formed by the description, the claims and the drawings. The drawings may in principle serve as basis for the features to be introduced, in particular when [their] function and structure are directly, completely and unambiguously apparent to the skilled person (Case Law, III.A.1.3). As a general rule, an isolated feature may only be extracted from a combination of features in the absence of any clearly recognisable functional or structural relationship among that features (see decisions T 1067/97, T 714/00 and T 25/03 cited in Case Law, III.A.1, p. 240). This principle also applies to the incorporation of features from drawings (see, e.g. T 191/93 or T 676/90).

[2.2] As compared to claim 1 of the parent application, claim 1 of all requests now contains the new feature that the distance between the two staggered rows that are foremost in the travelling direction is smaller than the distance between the two staggered rows that are rearmost in the travelling direction. As acknowledged by the appellant, there is no verbatim basis for this feature in the description or in the claims of the parent application. Rather, the figures serve as basis for this feature. The Board is of the opinion that the figures are sufficiently detailed so as to enable the derivation of relative dimensions. For example, all figures consequently show different distances between the rows, which suggests an intention on behalf of the author. 

[2.3] However, the figures also contain many other features, among which the appellant has set apart as relevant for the invention solely the actual feature of claim 1. When assessing the admissibility, the question arises of whether the skilled person, in view of the figures in their relationship with the whole content of the parent application and taking into account his basic knowledge, would directly and unambiguously recognize that this very feature that has been set apart is of particular technical importance, i.e. plays a paramount role in obtaining a particular technical function or effect.

The Board is convinced that no such direct and unambiguous teaching can be found in the parent application.

[2.4] As already mentioned, the text (description or claims) of the parent application does not expressly mention this feature, and even less so a function or effect that is closely related to it.

Paragraphs [0004] and [0008] deals with the general problem of how to safely guide a rotary windrower having a great working width in road traffic, as well as with a profile ensuring this. Paragraphs [0010], [0025], [0026] and [0048], however, deal with the possibility of modifying the length of the radial arms bearing the circles, which allows to deposit great swaths and transfer swaths under different circumstances of use. Finally, paragraph [0048] describes the use of a stock edge guiding system or a system for identifying obstacles.

Even when putting together these passages, the Board cannot find therein that the arrangement that is disclosed allows better deposit when cornering or results in constructive tolerance for situating the basic structure. The “optimum distances” mentioned in paragraph [0010] […] refer to the general possibility of producing different swath deposits mentioned in the preceding lines, inter alia also by varying the allocation of directions of rotation, whereby the rotary windrower can be used in a more flexible way […]. The manoeuvrability is mentioned […] exclusively in relation with the (independent) steerability of the rotating wheels. The relative distance of the staggered rows is not mentioned there, neither explicitly nor implicitly.

[2.5] Even if the Board assumed that said effect – better deposit when cornering plus constructive tolerance – results from such an arrangement, their effect would depend on many other factors and not only from the relative distance of the staggered rows. The general geometry of and the relative dimensions of the different structural elements, such as, for example, the relative dimensions of the swath circles, their relative distance with respect to the underframe, the relative length of the underframe, the position and relative dimensions of the basic structure, etc., may be expected to also have a considerable influence on the improved deposit of swaths when cornering. The Board is not convinced that the skilled person, if he had derived the alleged effect from the parent application at all, would have recognized immediately and without further ado that the relative distance plays a paramount role.

[2.6] Moreover, it does not necessarily follow from the parent application that the greater distance between the two rearmost staggered rows is related to the lodging of the underframe or that it would make it possible. For instance, paragraph [0021] also discloses other arrangements of the basic structure between the first and the third staggered rows. Whether the basic structure can be lodged between the rear staggered rows even when the latter are pivoted up does not only depend on their distance but also on their length, see Figures 9 and 10.

[2.7] As a result, the Board notes that the skilled person would clearly and without further ado recognize the greater distance between the rear staggered rows (from the figures) but would not directly and unambiguously recognize the technical meaning of this single feature – i.e. the technical effect or function resulting from this feature alone – from the whole content of the parent application. As this feature has been isolated and set apart from many other features, it gains a new, particular meaning. Therefore, claim 1 of the divisional application, which is common to all requests, adds a new fact, which goes beyond the content of the parent application. Thus none of the requests complies with the requirements of A 76(1).

The appeal is dismissed.

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T 1440/08 – In Through The Back Door

Claims 1, 6, 7, and 8 of the patent as granted read:

1. Torsional vibration damper having a driving transmission element which is connected, by means of a damping device (79) which acts in the circumferential direction, to a driven transmission element (53) which can move rotationally relative to the driving transmission element (36), at least the driven transmission element (53) having a centrifugal mass element (51) which is composed of a deformable sheet steel plate, is connected in a rotationally fixed manner by means of at least one first connecting face (94) to a hub disc (39), said hub disc (39) centring the driven transmission element relative to the driving transmission element, holds a friction clutch (55) by means of at least one second connecting face (96), and provides a friction face for a friction lining of a clutch disc (63) of the friction clutch, characterized in that the centrifugal mass element (51) is formed as a cut-out portion (92) from a steel sheet (90) and has substantially the same surface quality as the steel sheet (90), it being possible on account of said surface quality to dispense with remachining even at the connecting faces (94, 96) of the centrifugal mass element (51) [feature B].

6. Torsional vibration damper according to one of Claims 1 to 5, characterized in that [feature C:] a profiling (106) is formed on the rear side (104), which faces away from the friction face (98), of the centrifugal mass element (51) by means of the forming process, in which profiling (106) planar profiling faces (108) are provided alternately with grooves (110) which dip into the centrifugal mass element (51).

7. Torsional vibration damper according to Claim 6, characterized in that [feature D:] the profiling (106) is embodied so as to form a waffle pattern (112) having grooves (110a, 110b) running in two substantially perpendicular planes of extent.

8. Torsional vibration damper according to Claim 7, characterized in that [feature E:] the grooves (110a) in a first direction of extent (114) run in substantially the same direction of extent as a grain structure (118) of the centrifugal mass element (51), while the grooves (110b) cross the grain structure (118) in the substantially perpendicular direction of extent (116) to the latter.

Claim 8 of the first auxiliary request corresponded to a combination of claims 1, 6 (feature C), 7 (feature D), and 8 (feature E) as granted.

** Translated from the German **

[4] According to the established case law of the Boards of appeal of the EPO (see T 310/87 NB: This citation is erroneous, it shouls read T 301/87) objections under A 84 are admissible in opposition and opposition appeal proceedings, if they are based on amendments of the patent.

It was argued that, in view of T 367/96 [6.2], it is not possible to examine conformity with A 84 in opposition and opposition appeal proceedings when the amendment consists in the combination of several claims as granted. However, T 367/96 concerns specific objections against a lack of support of the claims in the description, whereas the present case concerns contradictions within a claim arising from the amendment.

If the combination of claims as granted makes the invention appear in a different perspective, giving rise to a lack of clarity which was already present in the patent as granted, the established case law of the Boards of appeal of the EPO (see e.g. T 472/88, T 420/00, T 681/00) definitely allows the Boards to examine objections under A 84. This is true in particular when, as in the present case, the lack of clarity concerns features which are decisive in the assessment of novelty and inventive step (see T 1459/05)

In the present case claim 1 was amended by adding features C to E, which correspond to claims 6 to 8 as granted. The introduction of these features gives rise to a lack of clarity of claim 1, or to a contradiction between features B and C. However, when the addition of a feature leads to a contradiction in the wording of claim 1, one has to consider that the lack of clarity is due to the amendment. As the lack of clarity is directly due to the amendment, the Board can examine whether the claim complies with the requirements of A 84 or not (T 310/87).

Feature C provides a forming process on the rear side of the centrifugal mass element, which, as can be seen from paragraphs [0010] and [0020] of the opposed patent, is carried out in order to increase the surface quality. As a consequence, the forming process is to be understood as remachining in view of a modification of the surface quality and is in contradiction with feature B, which excludes remachining.

The [patent proprietor] explained that the aim of the forming process according to feature C is to improve the conduction of heat by structuring the rear side of the centrifugal mass element, that the slight modification of the surface quality of the grinding surface was a side effect and that the grinding surface had essentially the same surface quality as the sheet steel plate. However, the Board cannot endorse this argumentation because there is no indication of such an effect of the rear side machining in the description. Quite to the contrary, the description explicitly explains that the aim of the remachining is an increase of the surface quality. As a consequence, this effect cannot be seen to be a side effect and it is not possible to presume that the grinding surface had “essentially the same surface quality” as the sheet steel plate after [the remachining].

Thus there is a contradiction between the features B and C of claim 1 such that the wording of the claim is unclear and does not comply with the requirements of A 84.

Personally, I do not like this approach because it sort of introduces clarity as a ground of opposition through the back door. The lack of clarity was already present in the patent as granted, and so was the combination lacking clarity. This being said, it is clear that in most cases the Examining Divisions do not check the clarity of all the possible combinations contained in the claims as granted, and it may well be that the Boards, as stated in T 1459/05, “need to have a power of discretion in order to be able to deviate, on a case-by-case basis and as an exception to the generally admitted practice”.

To complete the case law given in the decision, one may also cite T 656/07 (3.2.02), but also T 1659/07 (3.5.03), where T 656/07 is said to be “a particular case that cannot be generalised”, and T 1484/07 (3.3.10). One has the impression that the Boards have not reached a consensus on this topic yet.

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T 479/09 – Skilled, Not Stupid

The skilled person may not be the brightest person in the world (you might remember that T 60/89 [2.2.4] had found that “the skilled person in the field of genetic engineering in 1978 [was] not to be defined as a Nobel Prize laureate, even if a number of scientists working in this field at that time were actually awarded the Nobel Prize”), but he/she is not a dummy either.

[2] The [opponent] argued that “all disclosure in the patent specification relating to the claimed pad gives the weight of the cigarette paper in the units gm² or g m². The dimension expressed by this unit is … the dimension of a moment of inertia” and that therefore, the skilled person would be completely confused and unable to carry out the invention.

This point of view cannot be shared. Any skilled person in the paper industry will have no problem in understanding the units involved as the units gm2 or g m2 are well understood and commonly used to mean grams per square metre, all the more, because as indicated inter alia in D5 which is a glossary defining paper print terms “gm2” is a way of expressing the weight of paper in grams per square metre.

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T 754/08 – Yes But

In the present decision the Board also deals with a nice attempt by the opponent to take advantage of the lack of precision of the patent under consideration.

[3.2] Starting from the device disclosed in D9, the object underlying the claimed invention has to be regarded as to provide a suitable tool for operating this device without the need to provide an element adapted to abut against a neighbouring stationary object […].

To achieve this object, claim 1 proposes a fluid-operated ratcheting tool exhibiting the features according to the characterising portion of the claim. The rotatable outer projection is connected with the rotatable tool element to rotate it. The inner non-rotatable projection is connected with the non-rotatable tool element and provides the necessary reaction force without the need for an element adapted to abut against a neighbouring stationary object.

[3.3] D26 shows a hydraulic ratcheting tool (ULC-type with auto-back-up wrench) which, in operation, has an element (an arm with a rectangular opening) which holds a bolt stationary while another element (a rotatable element with a hexagonal opening) applies a rotation to the nut surrounding the bolt. Therefore, the movement realised is, from a kinematic point of view, the same as that required by D9, i.e. the rotation of a tool element surrounding a non-rotatable element.

[3.4] However, as acknowledged by the [opponent] itself, the tool of D26 cannot be used as such to operate the device of D9, but needs to be modified for this purpose.

Contrary to the submission of the [opponent], said modifications cannot be considered minor. Not only had both the rotatable and the stationary elements of the tool to be modified to project from the housing of the tool; also the way in which the tool engages with the elements to be held stationary and to be rotated had to be changed, since the inner part 4 and the outer part 3 of the device of D9 are engaged with on their inner surface, while the bolt and the nut shown in D26 are engaged with on their outer surfaces.

Moreover, these modifications, changing the way of engaging the different rotatable and stationary elements, imply a different way of applying the torque. Since the tool shown in D26 is designed for applying high torques, the person skilled in the art would be dissuaded from changing the application of the torque in a way which might impair the tool’s functioning.

Therefore, it was not obvious for the person skilled in the art to try to achieve the given object by selecting the ULC-type tool with auto-back-up wrench shown in D26 and modifying it according to claim 1.

[3.5] This finding cannot be challenged by the [opponent’s] argument according to which the alleged lack of detail of the patent in suit proved that the common general knowledge of the person skilled in the art enabled him to modify the tool shown in D26 to operate the device of D9.

It is not disputed that the person skilled in the art was in a position to perform these modifications. However, the relevant question when examining inventive step is not whether the person skilled in the art could have carried out the claimed invention, but whether he would have done so in the hope of achieving the object underlying it.

For the reasons explained above, in the present case this question is to be answered in the negative. […]

[3.8] In view of the above, the subject-matter of claim 1 of the main request involves an inventive step.

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J 11/09 – Call Of Duty

One of the more delicate situations a professional representative can encounter is when his/her client does not settle the bills. The present decision shows a case where such a situation led an experienced attorney to act in a way that was found to violate his duty to exercise all due care.

The Board found the appeal and the request for re-establishment to be formally admissible. The following passage deals with the allowability of the request:

*** Translated from the German ***

[3.2.1] According to the established case law of the Boards of appeal, a request for re-establishment can only be granted if the party filing the request under A 122 has taken all due care required by the circumstances and nevertheless could not observe a time limit. All the circumstances of each case must be looked at as a whole. The obligation to exercise due care must be considered in the light of the situation as it stood before the time limit expired. In other words, the steps the party took to comply with the time limit are to be assessed solely on the basis of the circumstances applying at that time (see: Case Law, 5th edition, 2006, chapter VI.E.6, p. 372)

By “all due care” in this context is meant all reasonable care, that is to say, the standard of care that the notional reasonably competent patentee/applicant/ representative would employ in all the relevant circumstances (cf. T 30/90 [3]).

When determining the standard of due care, it has to be taken into account that during the whole examining proceedings the appellant was represented by a professional representative who declared that he had paid all due fees in advance.

In this context it also has to be taken into account that the private practice of the professional representative is a small office, the only other employee being the representative’s wife, who was in charge of the accounting, as well as the fact that the representative followed a – partly inpatient and partly ambulatory – medical treatment between march 2008 and January 2009.

[3.2.2] For the request for re-establishment and, therefore, the present appeal to be justified, it is decisive whether both the applicant himself and his professional representative have taken all due care required by the circumstances, both in the general organisation of the internal procedures and in the concrete handling of the payment of the renewal fee for the third year.

[3.2.3] The appellant has presented the following particular circumstances which hindered him from concretely and correctly handling the payment relating to the renewal fee for the third year and the additional fee:

(1) a staff member of the private practice accidentally forgot to pay the renewal fee;

(2) the professional representative was temporarily unavailable, due to health reasons, between March 2008 and January 2009;

(3) the applicant faced financial difficulties.

[…]

[3.2.4] Insofar as the appellant refers to an accidental omission to pay the renewal fee, it is decisive whether all due care required by the circumstances was taken, both in the general organisation of the internal procedures and in the concrete handling of the payment of the renewal fee for the third year.

[3.2.4.1] Apart from the fact that the submissions of the appellant concerning the circumstances that hindered him from correctly handling the payment which have been given during the proceedings before the Examining Division (ED) and in the present proceedings are not congruent, none of the circumstances that have been presented can excuse the omission to pay the renewal fee for the third year in due time under A 86(1) or at least the grace period under R 51(2), with an additional fee.

[3.2.4.2] According to the submissions related to the appeal (Beschwerdevorbringen), which the appellant has again confirmed in his statement in response to the opinion of the Board […] the professional representative of the appellant had de facto taken over the task of advancing the patent fees falling due, including renewal fees, and charging the appellant after the payment. It was also the professional representative who took the initiative of paying the fourth renewal fee for all applications […] as well as the fees for re-establishment and the appeal fees. To this extent the payments of the fees were made independently of the appellant. Moreover, it can be seen from the submissions related to the appeal that the professional representative had not made the payment of the third renewal fee because he did not want to advance it again, as the appellant had not settled other invoices.

As a consequence, the omission of the payment of the third renewal fee plus the additional fee was not accidental but conscious. Moreover, after the invoice of July 23, 2008, the representative of the appellant has not asked the latter again if the fee was to be paid or warned him of the danger of a loss of rights. Also no reasons have been given – nor does the Board see any – why the appellant did not react to the invoice sent by his professional representative on July 23, 2008. Accordingly the submissions related to the appeal makes it impossible to consider that both the appellant and his representative had taken all due care.

[3.2.4.3] Irrespective of the conscious omission to pay the renewal fee, which as such already excludes the required re-establishment, the appellant cannot in addition point out that the assistant of the professional representative had made a mistake when calculating the grace period for the payment of the renewal fee for the third year plus the additional fee, as he has done in the proceedings before the ED.

This mistake is a mere mistake of calculation because it is based on a misinterpretation of R 51(2). According to the established case law, however, ignorance or misinterpretations of a provision of the EPC cannot justify re-establishment (J 31/89 [3]; Case Law, chapter VI.E.6.3.2b), p. 380 et seq.).

The period of six months, calculated from the due date of the renewal fee that had been missed (due date: May 31, 2008; end of the grace period: December 1, 2008) follows from R 51(2) EPC. The assistant – as well as the representative of the appellant in the appeal proceedings – have misinterpreted (verkannt) this provision.

On that subject, the appellant cannot successfully assert that the late payment was still possible until the end of January 2009, as this corresponded to the end of the month in which the payment was due (Fälligkeitsmonat). This understanding of the legal situation (Rechtsauffassung), which the appellant presented in his statement of February 25, 2010 / March 1, 2010 filed as a response to the notification of the Board dated December 29, 2009, is not in harmony with R 51.

It is true indeed that the renewal fess for a European patent application in respect of the coming year fall due on the last day of the month which has the same name as the month containing the date of filing of this application (R 51(1)) but this provision concerns the regular payment.

To the extent to which R 51(2) allows the late payment of a renewal fee that has not been paid until the due date (Fälligkeitseintritt), the wording of this provision provides a period of six months after the payment was due, in the present case after expiry of the normal period for paying the fee under A 86(1) and R 51(1).

There is no legal basis in the EPC for mixing those two rules in the way presented by the appellant in his statement filed as a response to the notification of the Board, coming to the conclusion that the grace period ended only after expiration of the sixth month after the communication of the ED dated July 4, 2008. The appellant also misinterprets (verkennt) the corresponding hint of the Board in its notification of December 29, 2009. […]

[3.2.5] As far as the alleged unavailability of the professional representative for health reasons is concerned, the general organisation of the internal proceedings in his private practice are relevant.

[3.2.5.1] It is true that the case law of the Boards of appeal acknowledges that when the question is to be answered whether all due care required by the circumstances has been taken in order to observe a time limit, there may be different requirements for small private practices and companies, concerning the organisation of the monitoring of time limits, depending on the size and the type of private practice or the company, as the case may be, and on the number of delays that have to be monitored. Unlike the situation in a big private practice or a big company having a patent department, one may consider that there is no need for a checking mechanism in a small private practice or a small company where, as a general rule, reliable staff works in an efficient and personal way (J 11/03 [7]; T 166/87 [2]).

In the present case, however, there was no presentation of the usual work process in the private practice if the professional representative of the appellant as far as checking of fee payments is concerned. The Board, in its notification dated December 29, 2009, has expressly pointed out this fact, but the appellant has not filed any further submissions on this topic in his statement.

[3.2.5.2] The fact that the professional representative – who declared himself to be “one of the first pioneer representatives” (Pioniervertreter der ersten Stunde) – has not made a single mistake so far, as he pointed out, is not a suitable argument for convincing the Board that there was a functioning system for checking payments and time limits within the meaning of the case law of the Boards of appeal (cf. J 2/86 and J 3/86 ; J 23/92 ; T 491/89 [6]). The general reference to an “error free” functioning of the management of the fee list by the professional representative’s wife as well as her technical training, professional qualification and experience with fee payment over a period of twenty years cannot be sufficient for establishing that the requirements for due care have been observed, either.

[3.2.5.3] Moreover, the professional representative apparently was not continuously unavailable, due to health reasons, over the whole relevant period of time, [so as to be unable] to act as a patent attorney for the patent application under consideration. According to his submissions during the proceedings before the ED and during the appeal proceedings, he underwent a short inpatient medical treatment in March and suffered from medical problems in the following weeks and months, in particular from November 2008 until the expiry of the grace period for the payment of the renewal fee plus the additional fee. However, the appellant did not argue that these problems had completely hindered him from working. Moreover, it has not been shown whether and which precautions the representative of the appellant had taken in order to guarantee that in case of his being unavailable for health reasons other persons would act in order to observe the time limits. Such precautions may be expected from a professional representative in the framework of his duty to exercise all due care (J 41/92; T 324/90).

[3.2.5.4] Moreover, the professional representative of the appellant admitted that he consciously had not paid the third renewal fee because some invoices had not been settled (see above [3.2.4.2]), so that the omission to pay the fee cannot be said to be due to an isolated mistake in an otherwise satisfactory system in the private practice of the professional representative.

[3.2.5.5] Finally, after [having sent] the invoice to the appellant on July 23, 2008, the professional representative has not asked him once more if the fee was to be paid or warned him of the danger of a loss of rights. This omission as such is a violation of the duty of a professional representative to exercise all due care.

[3.2.5.6] Given that the only statement of the appellant regarding the question in the notification of the Board […] concerning the usual work process for fee payments is that he might (wohlmöglich) use the services of a professional third party for future fee payments, this statement is not relevant for the decision.

Irrespective of the fact that the letter of the PAVIS invoicing, information and service organisation of the patent attorneys in Germany, dated February 4, 2010, is only a service offer without any legal obligation, it is in any case irrelevant for the payment that had been missed in 2008, which underlies the appeal proceedings.

[3.2.6] As far as the – alleged – financial difficulties of the appellant are concerned, the Board has acknowledged in earlier cases that financial difficulties for which [the requesting party] was not responsible (unverschuldet) and which led the party to miss time limits for fee payments, can be a reason for allowing re-establishment. Such requests can only be allowed if the financial difficulties were serious and due to circumstances for which the requesting party is not responsible (die der Antragsteller nicht zu vertreten hat) and if the requesting party has exercised all due care in seeking financial assistance (J 22/88 ; J 9/89 [3]; T 822/93 [8]).

The appellant has not given any details concerning his financial difficulties, nor has he made credible (R 136(2)) that during the period under consideration (May to December 2008) he had no means that would have allowed him to make the payments, so that he was completely unable of paying the fees, and that he insistently sought financial assistance […].

In its notification dated December 29, 2009, the Board has expressly made the appellant aware of this lack of substantiation, but he has not made any further submissions on this topic in his statement of February 25 / March 1, 2010. His remark that he “requested an oral hearing of the appellant for explaining the difficult financial situation of the appellant … if the Board considers this to be necessary to establish [this point] in a credible way” is not sufficient as substantiation. Article 13 RPBA together with R 100(2) EPC would stand in the way of a substantiation within the framework of oral proceedings.

[4] For the reasons explained under [3] and in particular under [3.2.1] to [3.2.5], the professional representative has not taken the required due care concerning the payments under consideration, so that the requirements of A 122(1) are not complied with and the appeal is unfounded (unbegründet). […]

The appeal is dismissed.

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NB: Cases J 12/09, J 13/09 and J 14/09 are parallel cases.

T 1397/07 – Silence Won’t Deter

[7.1] According to the established jurisprudence of the Boards of Appeal it is necessary, in order to assess inventive step, to establish the closest state of the art, to determine in the light thereof the technical problem which the invention addresses and successfully solves, and to examine the obviousness of the claimed solution to this problem in view of the state of the art. This “problem-solution approach” ensures assessing inventive step on an objective basis and avoids an ex post facto analysis. The closest prior art is normally a prior art document disclosing subject-matter aiming at the same objective as the claimed invention and having the most relevant technical features in common. 

[7.2] The patent in suit is directed to a process for dimerising an olefinic feedstock with high selectivity to the dimer […]. A similar process already belongs to the state of the art in that document D6 discloses a process for dimerising isobutene having all the features of present claim 1 apart from the location of the side draw […], wherein said dimerisation is enhanced and further oligomerisation is suppressed […]. 

[7.2.1] The [patent proprietor] submitted that document D10 represented the closest prior art, since it was more recent than document D6, but conceded that in view of the absence of a side draw in any distillation column disclosed in document D10, document D6 had more technical features in common with the claimed invention. The Board notes, however, that A 56 requires the assessment of inventive step to be made “having regard to the state of the art”, A 54(2) defining the state of the art “to comprise everything made available to the public”, without addressing any time frame (see T 113/00 [3.7]). As a consequence, there is no legal basis in the EPC to preclude a particular state of the art, in the present case document D6, from being taken into account when assessing inventive step, merely because of being published some years earlier than another one. Furthermore, no technical reason has been submitted as to why the skilled person would disregard document D6 for the only reason that its publication date lies further in the past than that of document D10.

[7.2.2] Thus, the Board considers, in agreement with the [opponent], that in the present case the process of document D6 […] represents the closest state of the art and, hence, takes it as the starting point when assessing inventive step. 

[7.3] In view of this state of the art, the [patent proprietor] submitted that the problem underlying the patent in suit was the provision of a more versatile process in order to make more oxygenates available for the process. 

[7.4] As the solution to this problem, the patent in suit according to the auxiliary request I proposes that the at least one flow comprising oxygenate is withdrawn from the side of at least one distillation column from a plate higher than the feed plate. 

[7.5] Said solution thus covers processes wherein MTBE is the oxygenate. However, MTBE is the oxygenate used in the process according to the closest document D6. Thus, at least insofar as the oxygenate is MTBE, the claimed process cannot be more versatile than that of document D6, with the consequence that the purported improvement cannot be achieved for this embodiment. 

[7.6] Since in the present case the alleged advantage, i.e. improved versatility of the process with respect to the oxygenate, is not achieved throughout the entire ambit of the claimed subject matter, the technical problem […] needs to be redefined in a less ambitious way. In view of the teaching of document D6, and as conceded by [patent proprietor] in the oral proceedings (OPs) before the Board, it can merely be seen in the provision of an alternative process for dimerising olefin feedstocks (see T 939/92 [2.5.4]). 

[7.7] Finally, it remains to be decided whether or not the proposed solution to the problem underlying the disputed patent is obvious in view of the cited prior art. 

[7.7.1] Document D6 embraces merely two possibilities for the positioning of the side draw in the distillation column, namely above or below the feed plate, there being no other conceivable configuration, as agreed by both parties. Hence, withdrawing the side stream at a plate above the feed plate is neither critical nor a purposive choice from within the teaching of document D6 for solving the objective problem underlying the patent in suit, since no unexpected effect has been shown to be associated with this position of withdrawal vis-à-vis the only other possibility. The act of positioning the side draw above the feed plate is thus within the routine activity of the skilled person faced with the mere problem of providing an alternative process for dimerising olefin feedstocks. Therefore, the arbitrary choice of withdrawing the oxygenate-containing side stream from a plate higher than the feed plate cannot provide the claimed process with any inventive ingenuity. 

[7.8] For the following reasons the Board cannot accept the [patent proprietor]’s arguments designed for supporting inventive step. 

[7.8.1] The [patent proprietor] submitted that the skilled person would have been deterred from locating the side stream above the feed plate, there being no pointers in document D6 to placing the side draw above, but rather strong pointers to placing it below the feed. More particularly, there was no teaching in document D6 that MTBE could be present in the distillation column above the feed. On the contrary, since it was indicated at column 2, line 55 that the MTBE and oligomers were withdrawn as a bottoms product, and in claim 12 that a diisobutene fraction containing MTBE was recycled to the reactor, dimers/oligomers being heavy products, the skilled person, wishing to recycle a stream high in MTBE and containing some oligomers would have placed the side draw towards the bottom of the column, and thus, below the feed plate, in order to be sure of withdrawing an MTBE-containing stream.

However, there is no specific teaching in document D6 regarding the positioning of the side draw with respect to the feed plate, the lack of a specific positive teaching to place the side draw above the feed plate not being tantamount to a deterrent. 

Indeed such a teaching, had it been present, would have rendered said document novelty destroying for the presently claimed process. The skilled person thus takes the teaching of document D6 at face value, which means that he would have expected that all processes described specifically therein, as well as those processes falling within the general teaching thereof, would have been suitable for dimerising an olefin feedstock. 

Thus even if there had been a hint in another document discouraging the skilled person from positioning the side draw above the feed, the skilled person would still have expected all processes within the teaching of document D6, including that of positioning the side draw above the feed, to successfully dimerise an olefinic feedstock. 

Nothing was submitted by the [patent proprietor] from which the Board could reasonably conclude that the skilled person has been deterred from following the straight teaching of that document, such that the [patent proprietor’s] arguments do not convince the Board. 

With regard to there being no teaching in document D6 that MTBE could be present in the distillation column above the feed, when assessing inventive step it is not necessary to establish that the success of an envisaged solution of a technical problem was predictable with certainty. In order to render a solution obvious it is sufficient to establish that the skilled person would have followed the teaching of the prior art with a reasonable expectation of success (see decisions T 249/88 [8]; T 1053/93, [5.14]).

In the present case, the Board cannot agree with the [patent proprietor]’s argument that due to some purported uncertainty about the predictability of success, the skilled person would not have contemplated locating the side draw above the feed plate in order to merely provide an alternative process for dimerising olefin feedstocks, particularly when said alternative falls within the teaching of document D6. It was only necessary for him to confirm experimentally by routine work that placing the side draw above the feed plate in that process embodiment of document D6 […] indeed resulted in a successful process for dimerising olefin feedstocks, thus arriving at the claimed invention without inventive ingenuity. 

Finally, with regard to the alleged pointers toward placing the side draw below the feed, the two passages in document D6 referred to by the [patent proprietor] […] do not describe the embodiment in this document which is the closest to the presently claimed process, […] wherein it is specified that the first distillation may be carried out with an intermediate draw stream in the distillation column which can be recycled to the oligomerisation reaction. 

 In both passages referred to by the [patent proprietor], this first distillation is carried out without withdrawal and recycling of a side stream, such that any teaching which may be derived therefrom is not relevant to the closest prior art embodiment which is the starting point in the assessment of inventive step. 

[7.8.2] The [patent proprietor] also submitted that although the skilled person could have adapted the process according to document D6 and thereby arrived at something falling within the terms of the claims, he would not necessarily have done so.  

However, if the problem is merely the provision of an alternative process, the skilled person would modify the process according to document D6 in any way that he could, particularly, when, as in the present case, said modification lies within the general teaching of said document […]. 

[7.8.3] Finally, the [patent proprietor] submitted that the commercial success of the claimed process as witnessed by the significantly lower investment costs required therefor supported the presence of an inventive step. 

However, according to established case law commercial success alone is not to be regarded as indicative of inventive step. Such secondary indicia are no substitute for the assessment of inventive step vis-àvis the state of the art on an objective basis following the “problem-solution approach”. 

Secondary indicia represent auxiliary considerations for the assessment of inventive step and are only relevant in cases of doubt when the objective evaluation of the prior art has not provided a clear picture (see decisions T 24/81 [15]; T 351/93, [5.6]; T 645/94 [4.7]).

In the present case, however, there are no doubts as to the absence of an inventive step, since the objective evaluation of the state of the art following the “problem-solution-approach” gives a clear picture, albeit a negative one […]. In any case, it has not been shown that any purported economical advantages of the claimed process are causally linked to the distinguishing feature of the invention, namely the specific location of the side draw and for that reason too, this argument is not convincing. 

[7.9] For these reasons, the solution proposed in claim 1 to the problem underlying the patent in suit is obvious in the light of the prior art. 

[8] As a result, the Appellant’s auxiliary request I is not allowable for lack of inventive step pursuant to A 56. 

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T 12/07 – Where Could/Would Ends

When assessing inventive step within the framework of the problem-solution approach, the EPO often invokes the so-called “could/would” approach, following T 2/83 [7], where it was stated that “[t]he question regarding the inventive step, in relation to the modification of the layered tablet of the state of the art as suggested by the present applicants, is not whether the skilled man could have inserted a barrier between the layers but whether he would have done so in expectation of some improvement or advantage”, and T 143/86 [5] where we read: “It is perhaps worth while pointing out in this respect that, in order to avoid an ex post facto analysis, the test to be applied when considering the question of whether the combination of the teachings of two prior art documents involves an inventive step is whether the man skilled in the art would have combined them, and not whether he could have combined them.”

The present decision shows that there are cases where the should/would approach is not to be applied.

[4.1.1] The present invention relates to methods of preventing or reducing aggregate formation of growth hormones, growth factors, insulin, monoclonal antibodies and interferons upon dehydration and rehydration […].

[4.1.2] Document D15 relates to the stability of proteins during freeze-drying […]. For deciding whether document D15 qualifies as the closest prior art, it is important to evaluate whether or not stability in the context of document D15 includes prevention or reduction of aggregate formation. In the light of the disclosure [of D15], the board is convinced that this is the case.

The relevant passage reads as follows:

“Manufacturers can minimize the degradation that arises from aggregation and other mechanisms by paying careful attention to the details of the freeze-drying process. Most often, however, stability problems are addressed by varying the formulation. For example, excipients, or lyoprotectants, are added to improve stability of the dried product.”

The board concludes from this passage that lyoprotectants are used for improving stability and that prevention or reduction of aggregation is one aspect of stability according to document D15.

Further evidence that resistance to aggregate formation is comprised in the term stability is provided by the specific examples […] (“The stability (resistance to aggregate formation)of …”)). It is not denied that loss of protein activity and denaturation are not necessarily linked to aggregation, as was pointed out by the appellant-patentee. However, this fact is of no relevance, as document D15 contains the teaching that the lyoprotectants disclosed therein, which include trehalose as one of the preferred lyoprotectants […], are inter alia used for protecting the proteins against aggregation.

[4.1.3] As a consequence, document D15 constitutes the closest prior art and the problem to be solved can be defined as the provision of a further method of preventing aggregation during lyophilisation and rehydration of proteins.

This problem was solved by the method as claimed in claim 1 of the main request, i.e. by choosing trehalose as protective agent for growth hormones, growth factors, insulin, monoclonal antibodies or interferon. In the light of the data in Tables 1 and 2, the board is satisfied that the problem defined above was plausibly solved.

[4.1.4] In view of the teaching that the lyoprotectants according to document D15 […] are all suitable to suppress or reduce aggregate formation during freeze-drying and storing of proteins in general, the specific combination of trehalose with one of the proteins according to present claim 1 is nothing but an arbitrary selection, which in the absence of any non-obvious effect does not involve an inventive step. The skilled person concludes from the teaching of document D15 that the problem defined [above] could be solved no matter whether trehalose or any of the other lyoprotectants according to document D15 was chosen. Such an arbitrary selection cannot give rise to an inventive step.

[4.1.5] The appellant-patentee held that the proteins defined in present claim 1 were used parenterally [NB: According to Wikipedia, parenteral is a route of administration that involves piercing the skin or mucous membrane; parenteral nutrition refers to providing nutrition via the veins.] and in multiple doses. Although not specifically mentioned in the claims, this feature was implicitly disclosed by the selection of the proteins. As a consequence, the skilled person would not select trehalose, sucrose, human serum albumin or bovine serum albumin, which had the drawback of not having an established history in the formulation of pharmaceutical products for parenteral therapy […].

Not having an established history in the formulation of pharmaceutical products for parenteral therapy does not mean, however, that these lyoprotectants are not suitable. It simply means that this suitability must possibly be verified by standard tests, which do not require inventive skill and which do not keep the skilled person from taking these lyoprotectants into consideration. On the contrary: as trehalose and the three further lyoprotectants mentioned above are commonly used as lyoprotectants […], they are preferred by the skilled person, as their stabilising effect and, as a consequence, their aggregate-reducing effect is beyond any doubt. This argument can therefore not succeed, even it is assumed in favour of the appellant-patentee that the parenteral application in multiple doses is an implicit feature of claim 1.

[4.1.6] The appellant-patentee further argued that the skilled person, starting from the teaching of document D15, had no reasonable expectation of success by selecting trehalose in combination with the specific proteins as defined in claim 1, in view of the numerous options that were at his disposal. He could but would not have made this selection.

As was mentioned above […] the skilled person made an arbitrary selection from the teaching of document D15 in order to arrive at the claimed invention. The method according to present claim 1 is just one of many possibilities for solving the problem defined […] above. As a consequence, the “could/would-approach” does not apply in the present case.

[4.1.7] As a consequence, the subject-matter of claim 1 and of dependent claims 2 to 4 does not meet the requirements of A 56.

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T 1989/08 – A Firm Belief

This decision also contains some interesting statements on prejudice.

[4.3] The Respondent asserts that a prejudice against varying additive concentration in the fuel would dissuade the skilled person from following any of the above paths. As explained [in the patent specification …] complex on-board dosing control is necessary to avoid overdosing which would deplete stored additive, but also lead to an increased ash burden in the Diesel particular filter (DPF).

[4.3.1] The Board finds that such a prejudice has not been conclusively proven.

In the jurisprudence a technical prejudice in a particular field is generally held to relate to an opinion or preconceived idea widely or universally held by experts in the field, see the Case Law of the Boards of Appeal, 5th edition, 2006 (CLBA hereinafter), I.D.9.2, page 161, final paragraph, and the case law cited therein.

To demonstrate prejudice requires a high standard of proof, as is evident from the immediately following paragraphs of the cited section of the CLBA. Thus, expression of the prejudice in standard works or a textbook is normally required, raising the level of proof close to that needed for proving common general knowledge. It is for example not enough that the opinion or idea is held by a limited number of individuals or that it is a prevalent view within a given firm, however large.

[4.3.2] Including evidence subsequently filed in the appeal procedure, all the evidence offered in support of the alleged prejudice, amounts to no more than 10 documents, all of which are either specialist papers or patents. This small number of publications intended for a select readership in the field is in itself a tenuous basis for asserting prejudice.

[4.3.3] Importantly, none of these documents expressly indicates that variation in additive concentration should be avoided. D9, which is given special significance in proving prejudice, only instructs avoiding additive contamination in the fuel in the main tank, as does D10. Both publications, the Board notes, share an author (Wiedemann) and originate in the same firm (Volkswagenwerk AG). Even if D9 and D10 had expressed the alleged belief, that would be a belief held in only one firm, not one prevalent across the whole breadth of the vehicle industry.

[4.3.4] Moreover, some of the evidence contradicts the alleged prejudice. D10 […] discusses a system with constant additive dosing rate (3ml/h) into the supply line. Fuel is supplied from a separate tank within the fuel tank to which excess additive rich fuel is again returned. Fuel is topped up from the remaining part of the tank to meet demand, whereas flow in the opposite direction is prevented to keep the fuel in the main tank pure. It is clear that depending on the engine operating conditions additive concentration in the separate tank (and supply and return lines) must fluctuate: low return of additive rich fuel means greater top-up with pure fuel which will decrease additive content, while high return means less top-up resulting in an increase in additive content. This is similar to the fluctuations described in the patent specification […], with the difference that the relative size of the separate chamber to the tank imposes greater limits on the amount of fluctuation.

[4.3.5] Likewise, D1, as discussed previously, generally regards the variation of the concentration of a fuel additive in the fuel to be advantageous, in particular in stop-and-go operation, with the concentration varying between a low value for high fuel consumption and a high value for low consumption. D1 may not mention catalytic additives for DPF regeneration, but its teaching is of general scope that applies to a wide range of additives independent of their purpose. Such a teaching surely inclines the skilled person towards, rather than away from a variation of additive concentration.

[4.3.6] If any common opinion does emerge from the various citations it most likely relates to dosing at optimum levels, high enough to ensure efficient and regular DPF regeneration in all operating conditions but not so high as to consume too much additive and/or saturate the DPF […]. This does not exclude variations in additive concentration, nor does it bar the skilled person continuing along any of the obvious paths described above. Mindful of such optimum dosing he will adjust various parameters - for example in the course of routine tests or trial and error - to ensure that he does not exceed optimum levels. This appears similar to the way the patent itself doses at a rate fixed at “a mean value between that ideally required for maximum and minimum fuel flows” […].

[4.4] In the light of the above the Board concludes that the dosing process defined in claim 1 of the main request lacks inventive step contrary to A 52(1) in combination with A 56.

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T 1989/08 – Not Automatic

Will a third party intervention filed during opposition appeal proceedings and raising new objections automatically lead to a remittal to the first instance? Not necessarily, as the present case shows, where the Board found a way to avoid a remittal.

[2] The Board agrees with the [patent proprietor] that consideration of the new case based on new evidence and brought by the intervener at this late stage would normally require postponement or possibly remittal of the case. In order not to unreasonably prejudice the position of the opponent, the Board finds it however expedient to deny the request for immediate remittal and initially limit consideration of the case to the legal and factual framework defined by the original appeal as lodged by the [opponent] and subsequent submissions in response thereto, and without relying on any of the new evidence and facts presented by the intervening party or submitted responding thereto.

That claim 1 of all requests includes a feature (retrofitting) which, according to the [patent proprietor], addresses the intervening party’s case is also no impediment to the Board considering the case within the original framework of the appeal. Firstly, the [patent proprietor] cannot expect to have the Board consider amendments filed at such a late stage in the proceedings, i.e. one week before the oral proceedings (OPs), if he is not also prepared to discuss them unconditionally at this stage of the proceedings. Both the [opponent] and the intervening party were moreover prepared to discuss the new feature at the OPs within the framework of the original appeal, and indeed have done so. Both also argued against remittal: the desire for legal certainty of these parties, who represent the public interest, must outweigh any interest the [patent proprietor] may have for a first instance consideration of what can be decided within the initial framework.

The Board was therefore justified in denying the [patent proprietor’s] preliminary request for remittal. Given that it can decide the case within the framework of the original appeal, as is apparent from the reasons that follow, the question of remittal is in any case moot.

I think that the Board was right not to remit because otherwise the third party intervention, the aim of which was to have the patent revoked, would have had the effect of significantly delaying the revocation, which was possible on the basis of the grounds of opposition already discussed before the Opposition Division.

We shall see more of this decision next time.

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T 365/09 – Nothing New Under The Sun

The present decision corresponds to the second appeal in this case. First the Opposition Division (OD) had revoked the patent on the ground of lack of novelty. The patent proprietor filed an appeal. In its decision T 785/05, the Board set aside this revocation and remitted the case to the OD, which maintained the patent in amended form. The opponent filed an appeal. A statement of the opponent made the Board consider whether novelty was still an issue:

[2] The question of lack of novelty, initially raised by the opponent and already decided in case T 785/05 was indirectly addressed again by reference to another case in the Opponent’s letter of 29 September 2008 […]. Hence, the Board has considered the question of whether the decision on novelty had become final (res judicata) or was again open to discussion.

[2.1] According to the EPC 1973, a decision which had become final and the reasons on which this decision had been based (ratio decidendi), were no longer open to discussion, nor could the Board in a further prosecution of the same case depart therefrom (cf. T 934/91 [2-3]; T 843/91 [6-6.3]; and also Case Law, chapters VII.D.10.1 and VII.D.10.2).

These findings were confirmed by the Enlarged Board of Appeal (EBA) in G 1/97 [2(a)], wherein, in its first paragraph, reference was made, first of all, to the suspensive effect of an appeal against a decision of a department of the EPO provided for by A 106(1) EPC 1973 and then to the consequences of this effect:

“This effect prevents a decision from becoming final and is therefore limited to ordinary appeals, i.e. those against decisions which are not yet final (…). Since, …,  decisions of the boards of appeal become final as soon as they are issued, there can be no possibility of appeal under A 106  against these decisions. This is confirmed, moreover, by A 21 and A 106, which do not include the boards of appeal in the list - which must be regarded as exhaustive - of departments whose decisions are open to appeal” (emphasis added).

[2.1.1] The only further question, which could still arise in this respect, was of whether these findings would still be applicable under the revised version of the EPC 2000.

[2.1.2] As can most easily be seen in the OJ EPO, Special Edition 4/2007, “Synoptic presentation EPC 1973/2000 - Part I: The Articles”, the wording of A 21 and A 106, to which articles reference had been made in G 1/97, has not been amended to “include the boards of appeal in the list - which must be regarded as exhaustive - of departments whose decisions are open to appeal.” (cf. G 1/97, as quoted in [2.1], above).

[2.1.3] However, the question remains to be examined of whether the situation has changed by the introduction of the new A 112a “Petition for review by the EBA”.

[2.1.4] A first difference between appeal and petition lies evidently in the fact that, unlike A 106(1), A 112a(3) clearly excludes a suspensive effect of the petition.

[2.1.5] Moreover, a petition for review can, according to A 112a, only be based on fundamental procedural violations or defects during the appeal proceedings, which do not include questions relating to patentability as defined in Chapter I of Part II (A 52 to A 57) of the EPC. This can be derived from the, in the Board’s opinion, exhaustive list of fundamental procedural violations and defects in A 112a(2) and R 104 and R 105. This view has, in the meantime, been confirmed in G 3/08 [7.2.5].

[2.2] Consequently, this Board takes the view that the rulings and rationes decidendi in the above decisions, in particular in G 1/97, are still valid under the revised provisions of EPC 2000. In other words, the facts and findings dealt with in T 785/05 are not open to discussion in these appeal proceedings. Nor can arguments, which are contrary to the ratio decidendi or the result of decision T 785/05, be taken into account for the assessment of inventive step.

[2.3] Hence, the matter to be decided in this case concerns only the question of whether the subject-matter as claimed in any one of the [patent proprietor’s] requests is based on an inventive step and, if the main request and the first and second auxiliary requests failed, furthermore the question of whether the third auxiliary request contravened or complied with A 123(2) […].

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T 2249/08 – Lost Without A Guide

This decision deals with an appeal by the opponent following the maintenance of the opposed patent in amended form. The Board came to the conclusion that the patent was to be revoked for lack of novelty over document D3, which the opposition division (OD) had refused to admit. The part I found most noteworthy concerns the opponent’s request for reimbursement of the appeal fee.

[6.1] The OD held that “no opinion can be reached as to whether D3 is prima facie relevant or not and hence exercises discretion and decides not to allow the novelty objection based on D3 into the proceedings (R 116).” […]. Thus it is apparent that the OD exercised its discretion to disregard “facts and evidence” presented belatedly, i.e. after a final date in preparation for oral proceedings (OPs). Such discretionary decisions are normally not subject to review, unless the decision was based on the wrong principles or was otherwise manifestly unreasonable (see CLBA 5th edition (2006), Chapter VII.D.6.6). Thus any finding of a substantial procedural violation through a discretionary decision also presupposes such grave errors, as opposed to mere errors of judgement (see CLBA Chapter VII.D.15.4.5).

Further, it is also required that the criticised discretionary decision was decisive for the outcome of the decision under appeal (see cases T 712/97, J 14/99, J 21/98, J 6/99, cited in CLBA Chapter VII.D.15.4.1)

[6.2] In the present case the decision of the OD was reasoned with the following arguments:

(a) no specific argumentation based on D3 with respect to lack of novelty ... had previously been submitted

(b) throughout the written procedure no indication had been given that D3 might potentially be considered relevant for assessing novelty...

(c) no full, uncontested translation of D3 being presented and the provided translation being ambiguous […].

[6.3] As to the arguments a) and b), the appellant submitted that D3 has been timely mentioned during the opposition procedure as being basis for a possible novelty attack.

As to the argument c, pursuant to R 3(3), a party is not required to file a translation of a document being in a non-official language of the EPO, unless being explicitly invited to do so. In that case, the party must be given a reasonable time limit to file a translation. Given that document D3 has been in the proceedings from the very beginning, both the OD and the proprietor had ample opportunity to demand a translation, and the fact that a translation was filed only during the OPs ought not have entailed adverse consequences for the opponent.

Accordingly, the appellant maintained that the decision of the OD not to admit D3 into the proceedings for the question of novelty was manifestly wrong, amounting to a substantial procedural violation.

Timeliness of D3 as a novelty attack on its own

[6.4] Document D3 was cited in the notice of opposition. The grounds for opposition were inter alia based on A 100(a), explicitly mentioning lack of novelty and inventive step. The facts and arguments accompanying the notice of opposition (referred to as F&A) further explicitly dealt with documents D1 and D2 as both depriving novelty of the patent in suit. D3 is first mentioned in the passages dealing with inventive step, being identified as the priority document of D2 and cited to illustrate the purpose of the spatula employed in D2.

As such, no independent novelty attack based on D3 per se is elaborated in the detailed grounds of opposition. On the contrary, it appears that the specific arguments for a novelty objection based on D3 were raised only in the OPs. This is also illustrated by filing only during the OPs a translation of the relevant parts of D3 […].

[6.5] However, as submitted by the appellant, […] the F&A states:

“In case ... [ the claims were to be limited in a certain manner] ... , the Opponent would object to such a limitation in view of the fact that the same would not be novel and/or inventive in view of the cited documents D1-D3”.

In fact, the claims were limited in the auxiliary request as foreseen by the opponent. Thus at least formally, D3 has been indicated as novelty destroying even in case of a more limited claim, so that argument (b) of the OD […] is unfounded.

The validity of argument (c) is equally questionable, as the wording of R 3(3) explicitly permits parties to file documents without translation. If doubts arise, the party must be given an appropriate time limit for filing the translation, which - when filed within the time limit - apparently cannot be regarded as late, and hence cannot be ignored. See R 3(3), last sentence:

“If a required translation is not filed in due time, the EPO may disregard the document in question.” (emphasis added by the board).

[6.6] That said, argument (a) of the OD […] still has some merit even on its own. While it is true that arguments can normally be advanced at any stage of the proceedings (as opposed to new evidence, such as a new document), in the given case the new arguments could not have been verified by the OD without a translation. However, the possibility of demanding a translation as foreseen by R 3(3), but only at a relatively late stage, - e.g. due to an issue which arises only in OPs - clearly contradicts with the need for the parties to have their case completely prepared for the OPs so that the case may be ready for a decision (R 116 (1) in combination with R 111(1)).

The board notes that the Guidelines appear to be completely silent on the application of R 3(3), and the board is also not aware of any applicable case law. In the absence of clear guidelines in case of such a contradiction the OD cannot be reprimanded for having decided in a manifestly unreasonable manner or for having relied on the wrong principles (see also T 234/86).

[6.7] Further, it is also questionable if the decision under appeal would have had a different outcome, had document D3 been considered for the issue of novelty. After all, this document and the disputed parts were taken into consideration for the examination of inventive step […], and the OD found that the patent as amended is not obvious in light of these documents. Thus, it appears to the board that a fortiori these documents could also not have taken away the novelty of the patent as amended, as least in the opinion of the OD. In other words, the decision of the OD not to discuss D3 for novelty does not appear to have been decisive, hence the procedural violation, if any, could not have been substantial.

The fact the finding on novelty or inventive step could have been erroneous or that it has been overturned by the board does not alter the character of this finding with respect to the question of a substantial procedural violation.

[6.8] Based on the above, the board finds that the OD did not commit a substantial procedural violation which could justify the reimbursement of the appeal fee.

Arguments that a reimbursement would be equitable for other reasons have not been put forward […]

The request for reimbursement of the appeal fee is refused.

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T 754/08 – Trouble With An Ex

This decision deals with an appeal of the opponent against the decision to maintain the patent in amended form.

The patent proprietor requested that Mr R., a former patent attorney who, as announced by letter, accompanied the professional representative of the appellant, not be allowed to make oral submissions. The patent proprietor did not dispute that Mr R. had the knowledge of a technical expert in the field of the patent in suit. However, since he was the former patent attorney of the opponent in this case, his submissions would be those of a professional representative. Since he was not authorised to act in the latter function, he should not be allowed to speak during the oral proceedings (OPs).

[2] The Enlarged Board of Appeal dealt with the issue of oral submissions by a person accompanying the professional representative of a party in its decision G 4/95. According to this decision (see points (1) and (2) of the order), said accompanying person may make oral submissions on specific legal or technical issues on behalf of that party, in addition to the complete presentation of the party’s case by the professional representative with the permission of and at the discretion of the EPO (see point (3)(a) of the order).

When exercising its discretion the EPO should consider in particular the following criteria (see point (3)(b) of the order):

(i) The professional representative should request permission for such oral submissions to be made. The request should state the name and qualifications of the accompanying person, and should specify the subject-matter of the proposed oral submissions.

(ii) The EPO should be satisfied that oral submissions by an accompanying person are made under the continuing responsibility and control of the professional representative.

Furthermore, the Enlarged Board decided that the same criteria applied to qualified patent lawyers of countries which were not contracting states to the EPC, without any further special criteria (point 3(c) of the order and point [13] of the reasons).

[2.1] In the present case the appellant had announced in due time […] that Mr R., a consultant of the appellant for technical questions, was going to participate in the OPs to make oral submissions on technical issues. It has not been disputed that his education and his present activity as technical expert in the field qualify Mr R. as a technical expert. Furthermore, the professional representative stated that the submissions of Mr R. would be made under his continuing supervision and would concern exclusively specific technical issues, in other words they would not replace but merely complement the case as presented by him.

[2.2] Mr R. is not disbarred simply because he is a former European patent attorney. The conditions set out by the decision G 4/95 are applicable to any accompanying person. Therefore, there is no reason to exclude a former European patent attorney as such. The respondent’s fear that his oral submissions could be those of a patent attorney rather than those of an expert is unfounded, since the professional representative of the appellant has explicitly stated that Mr R. would only speak about specific technical issues, while he himself would present the case.

[2.3] Under these conditions, the board sees no reason not to allow Mr R. to make oral submissions during the OPs.

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