Friday, 31 December 2010

T 1051/07 – It’s All About Money

I owe the knowledge of the present decision – which had escaped my scrutiny - to the Kluwer Patent Blog. It is one of those decisions where one can see that the problem-solution approach sometimes leads to, um, surprising results.

The Board had to deal with the refusal of an application by the Examining Division. Claim 1 on file read :
A transaction system (100) for providing a financial transaction service to a subscriber, said transaction system (100) comprising:
(a) a service control unit (120) which processes financial transaction services for the subscriber;
(b) a subscriber service interface (160) for providing a service menu to a mobile terminal of the subscriber through a communication network (200) and for outputting (S110; S210) a corresponding charging or realization service request message to said service control unit (120) to provide a corresponding financial transaction service when an item of said service menu is selected;
(c) a transaction service interface (150) connecting said service control unit (120) by means of a financial network (300) to at least one bank settlement system (410; 420) which upon a settlement request message transmitted by said service control unit (120) by means of said financial network (300) to said bank settlement system (410; 420) processes a first transfer of money between a bank account of the juridical body providing the financial transaction service opened in said bank settlement system (410; 420) and a bank account of the subscriber; and
(d) a database (110) for storing data processed in said service control unit (120), said database (110) including a service account of the juridical body providing the financial transaction service and a mobile account granted to a cellular phone number of a mobile terminal of the subscriber, wherein the service control unit (120) processes a second transfer of a corresponding amount of money between the service account of the juridical body providing the financial transaction service and the mobile account of the subscriber.
Having found this claim to be novel, the Board assesses its inventive step :

[3.2] Document D2 discloses a secure payment system allowing a user (payer) to pay, using e.g. a mobile phone, a service provider (payee) via a host computer.

[…] at least the following features of claim 1 are not disclosed in D2:
- a subscriber service interface for outputting a corresponding charging or realization service request message to said service control unit to provide a corresponding financial transaction service when an item of said service menu is selected (cf feature (b));
- a transaction service interface (150) connecting said service control unit (120) by means of a financial network (300) to at least one bank settlement system (410; 420) which upon a settlement request message transmitted by said service control unit (120) by means of said financial network (300) to said bank settlement system (410; 420) processes a first transfer of money between a bank account of the juridical body providing the financial transaction service opened in said bank settlement system (410; 420) and a bank account of the subscriber (cf feature (c));
- a database including a service account of the juridical body providing the financial transaction service (cf feature (d));
- wherein the service control unit processes a second transfer of a corresponding amount of money between the service account of the juridical body providing the financial transaction service and the mobile account of the subscriber (cf feature (d)). […]

[4.1] The closest prior art is considered to be provided by document D2. The above distinguishing features over D2 allow a user (subscriber) to load money on his account in the host computer.

Accordingly, the objective problem to be solved relative to D2 is to provide the system with means allowing a user to load money on his account in the host computer (or realise money from his account).

[4.2] As none of the documents cited in the search report or otherwise cited in the course of the examination procedure address the above objective problem to be solved or contain any indication as to its solution, the subject-matter of claim 1 is not considered to be obvious to a person skilled in the art.

[4.3] In the decision under appeal the claim then under consideration was in substance held to be the straightforward technical implementation of an administrative banking procedure lying outside the patentable regime.

The board generally agrees that reloading the host computer account fundamentally constitutes (part of) a business method and, thus, would lack technical character.

However, insofar as administrative banking procedures indeed lack technical character, present claim 1 is not confined to merely reciting an administrative banking procedure alongside straightforward technical means for its implementation, but rather provides a technical solution, involving technical means to the technical problem of how to reload such an account. The solution as claimed is, as discussed above, not considered obvious.

Accordingly, the subject-matter of claim 1 involves an inventive step in the sense of A 56.

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

To have a look at the file wrapper, click here.

The decision has also been commented on Visae Patentes.

Thursday, 30 December 2010

T 1612/07 – Insufficient Reasons (Remix)

Not long ago, we have seen a decision where Board 3.2.07 found a “decision by reference” of the Examining Division (ED) to be insufficiently reasoned. Here is another example.

[3] The ED issued its decision, which was requested to be taken “according to the state of the file”, in a standardised form, replacing an explicit reasoning by a mere reference to the reasons contained in three preceding communications, as follows:
“In the communication(s) dated 12.04.2006, 24.11.2006, 17.04.2007 the applicant was informed that the application does not meet the requirements of the EPC. The applicant was informed of the reasons therein.
The applicant filed no comments or amendments in reply to the latest communication but requested a decision according to the state of the file by a letter received in due time on 23.04.2007.
The application must therefore be refused.”
[4] R 68(2), first sentence, EPC 1973, states that decisions of the EPO which are open to appeal shall be reasoned. This means, according to established case law, that a decision must contain, in logical sequence, those arguments which justify the tenor and that all facts, evidence and arguments which are essential to the decision must be discussed in detail (T 278/00; T 963/02 [2]; T 897/03 [3 et seq.]).

Consequently, if a decision is merely reasoned by a reference to one or more preceding communications, the requirement of R 68(2), first sentence, EPC 1973 is only met if the referenced communications themselves fulfil the above defined requirements. The reasons for the refusal of the relevant requests must be clear from these communications both for the party concerned and for the board of appeal.

[5] In the present case, this condition is not met for several reasons.

[5.1] Doubts arise from the fact that the contested decision makes reference to three communications, each of which contains a plurality of different objections raised against different claim versions.

It would appear from the phrase “The applicant was informed of the reasons therein” that the grounds for the decision under appeal are constituted by all of the reasons which have been indicated in the respective communications. However, given the substantive amendments made to the application documents in the course of the examination proceedings, not all of the objections raised still apply to the latest set of documents filed. On the other hand, in view of the fact that the third communication contains explicit references to objections raised already in the two earlier communications, it would appear plausible that the decision is based only on those reasons which are mentioned in the third communication. In that case, however, the question arises why the decision makes reference to the first two communications at all.

For these reasons, it is not unambiguously clear which of the various objections comprised in the first and second communications still apply to the version of the application documents on which the contested decision is based.

[5.2] Another deficiency of the contested decision lies in the fact that the second and the third communications of the ED merely re-state objections as to lack of clarity and inventive step which had been raised in the respective preceding communication(s), but do not contain any indication as to why respective arguments and explanations submitted by the applicant had been found unconvincing.

Particular reference is made in this respect to the objection raised as to lack of inventive step. In its first communication […], the ED’s reasoning started from document D1. It was argued that the teaching of D1 left an obvious desire still to be met. Solutions to that desire were however considered to be suggested by the teaching of each of documents D2 and D3. Documents D4 and D5 were only mentioned in passing.

The second communication […] did not add any substantive matter to this reasoning, nor did it deal with the arguments put forward by the applicant in support of inventive step in its reply […].

Finally, the third communication […] noted that a combination of D1 with D2 or D3 was not the only line of reasoning that led to the conclusion of lack of inventive step and that it would appear that the subject-matter of the independent claims then on file lacked inventive step even with respect to each of documents D2, D3 and D5 taken in isolation. Again, no explanations were given as to why the arguments submitted by the applicant […] had not been found convincing.

Thus, since the communications do not deal with the applicant's arguments, neither does the standardised final decision.

[6] In the board’s judgment, the decision under appeal is not sufficiently reasoned in the sense of R 68(2) EPC 1973 and the above deficiencies in the reasoning amount to a substantial procedural violation which requires, in line with other decisions of the boards of appeal (see e.g. T 278/00 and T 897/03), that the decision under appeal be set aside.

Moreover, the procedural deficiency justifies, in application of A 111(1), the remittal of the case to the ED, as has been requested by the appellant.

In consequence, the appeal is deemed to be allowable and the board considers it to be equitable, by reason of the substantial procedural violation incurred, to reimburse the appeal fee (R 67 EPC 1973).

[7] For the avoidance of misunderstandings, the board notes that it does not generally object to a refusal of an application with reasons drafted in a standardised form by making reference to one or more preceding communications, in cases in which an applicant has requested a decision “according to the state of the file”. However, this form of decision should be chosen only exceptionally in clear-cut cases in which the reference to previous communication(s) amounts to a complete reasoning, avoiding any ambiguities as to the exact content and extent of the grounds for refusal and in which the communications have dealt with the applicant's arguments (if any).

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

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Wednesday, 29 December 2010

T 70/08 – Too Late

[7] The appellant has requested the reimbursement of the appeal fee relating to an earlier notice of appeal dated 13 September 2004 filed against a previous decision dated 15 July 2004 refusing the application and subsequently rectified by the Examining Division (ED) under A 109(1) on 28 December 2004. This request was already formulated before the ED during the subsequent first-instance proceedings following rectification of the first decision and in its second decision […] the ED considered the request as “deemed not to have been filed” on the grounds that the request was filed on 29 July 2005 (although wrongly dated 27 October 2004) and thus after rectification of the decision, i.e. after completion of the corresponding appeal procedure.

As already noted by the Board in its communication dated 22 March 2010, the request for reimbursement of the appeal fee is not allowable because the request was formulated by the appellant for the first time after the ED had already decided to rectify the first decision under A 109(1). Consequently, neither the ED nor the Board are able to order under R 103(1)(a) the reimbursement of the appeal fee of an appeal that has been fully allowed by the first-instance department and therefore closed before the appellant requested for the first time the reimbursement of the corresponding appeal fee (see in this respect decisions T 21/02 [3-8] and T 242/05 [1-2]).

This preliminary opinion of the Board was not disputed by the appellant in its letter of reply, and the Board sees no reason to depart from it.

In addition, the appellant confirmed during the proceedings that the auxiliary request for oral proceedings concerned the allowability of the appeal itself and not the request for reimbursement of the appeal fee relating to the previous appeal […], and in these circumstances there is no reason for the Board to arrange oral proceedings.

In view of all these considerations, the request for reimbursement of the appeal fee relating to the earlier appeal is refused for the reasons given above and already communicated to the appellant in the Board’s communication.

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

Tuesday, 28 December 2010

T 1450/07 – Plausible Function

The requirement of industrial applicability is not a very stringent one. Objections of non compliance with A 57 are rare, and hardly ever successful … except in the domain of biotechnology, where applicants are sometimes tempted to try to protect polynucleotides before knowing what they could be used for.

Claim 1 on file read :

1. A polynucleotide selected from the group consisting of
(a) polynucleotides encoding a polypeptide comprising the amino acid sequence as shown in Seq.ID No.2;
(b) polynucleotides encoding a polypeptide comprising the amino acid sequence from residues 1 to 329 as depicted in Seq.ID No.2;
(c) an allelic variant of the polynucleotide of (a) or (b);
or the complementary strand of such a polynucleotide.

Having dealt with A 123(2) and A 56, the Board has to answer the question of whether this claim fulfils the requirements of A 57.

[5] The existing case law establishes the criteria to be fulfilled for industrial applicability to be acknowledged (see e.g. T 898/05). The information in the application as filed should make plausible the identity of the claimed compound. Thus, the compound may be attributed to a known family of molecules on the basis of a comparison between its primary structure and that of molecules known in the art. Then, its putative functions must be disclosed. Experimental evidence is not necessarily needed. A number of reasonable assumptions may be made by taking into account the known functions of other family members as well as, for example and not exclusively, by taking into account the distribution of the claimed compound in the body. It should also be clear that the treatments therein mentioned are in relation to the function plausibly attributed to the molecule. Post-published evidence backing up these assumptions is always welcome. In fact, the more information, the better and the quality of the information is also fundamental. As often repeated, each case must be evaluated on its own merit.

[6] The present application identifies TGFα-HII as a member of the EGF/TGF family of transforming growth factors on the basis that it comprises a domain with six cysteine residues characteristic of that family and exhibits a degree of identity of 26% and a degree of similarity of 46% with the first isolated TGFα molecule - over a 236 amino acid stretch […]. These are the features previously used in the art as characterizing features of EGF/TGF family members even if the percentages of homology, 33% in case of mouse, rat TGF and murine EGF […], or of similarity, 50% between betacellulin and rat TGFα […] are somewhat different. In the board's judgment, this comparison makes it plausible that TGFα-HII is indeed a member of the EGF/TGF family.

[7] As regards the properties of TGFα-HII itself, it is mentioned on page 6, lines 7 to 9, that:
“A polynucleotide encoding a polypeptide of the present invention may be obtained from human brain and early stage brain tissue.”
Its putative functions and the therapeutic benefits to be drawn therefrom have been defined essentially as those earlier established for members of the EGF/TGF family.

For example, it is mentioned […] that:
“There appears to be a widespread distribution of TGFα in various regions of the brain ... Accordingly, in instances where neurological functioning is diminished, an administration of the polypeptide of the present invention may stimulate the brain and enhance proper physiological function.” and,
“TGFα-HII or soluble form thereof may also be employed to treat ocular disorders, for example, corneal inflammation. A variety of experiments have implicated members of the TGFα gene family in such pathologies.” and,
“Treatment may also be related to liver regeneration or liver disfunction, since TGFα and its homologs and hepatocyte growth factor trigger hepatocyte regeneration after partial hepatectomy and after acute cell liver necrosis...”.
[8] Several post-published documents have been cited which experimentally confirm the information provided by the patent application.

Document D15 […] shows that a protein with the same sequence as TGFα-HII, namely TAT137 is over-expressed in prostate cancer. In document D20 […], it is described that an anti- TGFα-HII (identified as TMEFF2) monoclonal antibody conjugated to the cytotoxic agent auristatin E was used with success to treat immunodeficient mice bearing xenografted prostate cancers. Document D4 reports that TMEFF2 is widely expressed in the brain and that a fragment consisting of the extracellular domain of TMEFF2 increases survival of neurons. […] The authors conclude that:
“These findings indicate that TMEFF2 holds promise as a candidate for use in the treatment of neurodegenerative disorders such as Parkinson's disease.”
[9] There is no doubt that the properties attributed to TGFα-HII make it suitable for use in the pharmaceutical industry.

[10] In accordance with the above mentioned case law and taking into account the sum total of this information, it is decided that the requirement of industrial applicability is fulfilled.

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A related decision can be found here.

Monday, 27 December 2010

T 814/08 – Don’t Look Behind The Fence

Some time ago, we have seen a case where a patentee tried to argue that the allegedly novelty destroying document was not enabling – without success. The present decision shows a case where this argument proved successful.

Claim 11 as maintained by the Opposition Division (OD) read:
11. A boron containing ceramic-aluminum metal composite having a density of at least 95 percent of theoretical density and being comprised of at least 60 percent by volume aluminum metal or alloy thereof, with the boron containing ceramic and at least one reaction product of the boron containing ceramic and aluminum dispersed within the aluminum metal or alloy thereof, wherein the amount of boron containing ceramic is at least 50 percent by volume of the total amount of boron containing ceramic and reaction product present in the composite.
[2.1] The [opponent] cited document D5 (“the Lucas paper”) as novelty-destroying for the subject-matter of product claim 11.

[2.1.1] D5 concerns the matrix microstructure and interfacial precipitation of Al-7Si metal matrix composites (MMCs) containing B4C and SiC particulates processed by a stircast technique […]. One of the MMCs under investigation comprised 25 vol.-% of B4C as a particulate material and an Al matrix alloy A 356 containing 7 wt-% Si and minor amounts of Mg, Ti and Fe […].This composite material was supplied by Dural Aluminium Composites Corporation, La Jolla, Ca., USA, in bar form. D5 […] states:
“Details of the casting technique are considered proprietary by the manufacturer, but the basic processing steps include surface preparation of the reinforcement and then combining the reinforcement with the matrix by stir casting which facilitates suspension of the reinforcement in the molten metal. In all cases, the cast composites were hot isostatically pressed to reduce casting porosity.”
The microstructure of the Al-B4C-MMCs is shown in the micrographs of Figure 2 on page 224 and reveals extensive reaction of the Al alloy matrix on and near the B4C interface, extending approximately 5 μm inward from the particulate surface.

The typical reaction products of B4C reinforcement and aluminium are reported to be AlB and Al4C3 […].

In his second affidavit Dr Chen subjected three of the micrographs of the Lucas paper to image analysing by high resolution digitising, handtracing of the various phases identified and software calculating the surface areas. He finds a value of 56% of the total B4C content of the composite of Figure 2a […]. In his first affidavit, Dr Chen estimated the porosity of the composite after densification by hot pressing to be between 1% and 2%, or, in other words, the density of the hot pressed material of Lucas as 98% to 99% of theoretical density.

Dr Chen finally states:
“While I appreciate that on the one hand the Patentee describes in European Patent No. 1425254 only the production of composite form metal powder using an infiltration technique whilst on the other hand Lucas describes in his paper only the production of composites by stir-casting, it is my opinion that both of these production techniques could result in composite material which is very similar, if not identical. Indeed, just looking at the micrographs of the Lucas paper, I could not say by which method the illustrated composites were formed.”
Dr Chen concludes that at least some of the composite material of the Lucas paper would fall within what the patentee defined in the opposed patent as novel material.

[2.1.2] In the board’s view, these arguments are neither convincing as such nor sufficient to deny novelty of the subject-matter of claim 11.

Firstly, D5 does not reveal the claim feature according to which “the amount of boron containing ceramic is at least 50 percent by volume of the total amount of boron containing ceramic and reaction product present in the composite.”

Secondly, Dr Chen’s assumption of a theoretical density of 98 to 99% is a mere estimation which is not supported by a corresponding disclosure in D5, but apparently based on data obtained from hot pressing of Al castings […]. The board doubts whether results obtained from HIP experiments of a cast Al alloy IN738 can be readily transferred to composites containing a substantial amount of ceramic, such as boron carbide.

Lastly, and most importantly, the board is of the opinion that D5 in itself is not an enabling disclosure of a preparation method for the Al-B4C MMCs under investigation, because the paper clearly states that the process of manufacture is proprietary (i.e. kept secret by the supplier of the MMCs) and involves undisclosed process steps such as surface preparation of the reinforcement, the processing temperatures, and the details of the stir casting which were not part of the skilled person’s common knowledge at the relevant time of the opposed patent.

It is mere speculation when Dr Chen in his first affidavit […] tries to fill the disclosure gaps of D5 as regards the method of producing the MMCs by referring to the so-called Duralcan process (D6, published in 1988). Although D6 does disclose a stir casting process for making Al MMCs, nothing in D5 indicates with the required certainty that the process described in D6 had indeed been used by Dural Aluminium Composites Corporation in the production of the composite material supplied to Lucas and co-workers.

[2.1.3] The [opponent] cited T 77/87
“as making clear that where in a single document relied on there is an inconsistency or lack of teaching, then it [was] legitimate to look behind the document to another document or relevant teaching in order to understand properly the disclosure of that document.”
The [opponent] argued that a person skilled in the art in 2001 reading D5 and faced with a “stir casting” technique that was described in 1991 as proprietary would have no difficulty in selecting the Duralcan process and thus be equipped readily to reproduce the teaching of D5.

The board cannot accept this argument, for the following reasons.

Decision T 77/87 [4.1.6] states:
“Summarising, the inconsistency between abstract document (7) and its basic original document (7’) would lead the man skilled in the art to ignore the abstract as erroneous and to consider as relevant teaching only the description according to the basic document”.
Thus T 77/87 refers to an inconsistency (an obvious error, a technical impossibility) in a document and how it is resolved by the skilled person. It does not deal with a situation where essential information is missing or deliberately withheld, as in the present case.

In the case of D5 there is no error or technical impossibility which could or should be resolved by referring to some related basic document.

[2.1.4] According to T 1437/07 [25], a
“disclosure in a prior art document is novelty-destroying only if the teaching it contains is reproducible. This need for an enabling disclosure is in conformity with the principle expressed in A 83. Thus, the requirements of sufficiency of disclosure are identical for a prior art document and a patent.”
As pointed out above, the Lucas paper does not enable a person of ordinary skill in the art to produce the MMCs under investigation. It is also not clear and proven beyond reasonable doubt that the composite material supplied by Dural Aluminium Composites Corporation, La Jolla, Ca., USA, was made by the Duralcan process disclosed in D6.

[2.1.5] The board therefore concludes that D5 does not anticipate the subject-matter of claim 11.

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NB: This decision has already been reported on Le blog du droit européen des brevets.

Saturday, 25 December 2010

R 17/09 – Man In The Street

Board members have to be very cautious in the way they address parties, lest they be accused of partiality, as the present decision on a petition for review shows.

The applicant whose application for a revolutionary invention (published as WO 2004/114595) had been refused - and whose appeal was deemed not to have been filed because the appeal fee was not paid in time (decision T 1465/08) – filed a lengthy petition for review in which he raised inter alia an objection of partiality:

“ […] There are elements which can support the hypothesis of the existence of the requirements prescribed by the article 24(3). As concerns the representative’s work, the appellant could raise the same doubts, even if this is not relevant for the petition.

I. The appellant thinks that the Board changed the grounds of its decisions, after having received the letter dated July 20th. In this way, he contravened the art. 15.5 of rpba in order to support its grounds (see points 1.1 and 1.2 of the present document).

II. The Board seemed to know that this request of patent is linked to many multinational interests (see letter dated July 20th) even if no other multinational company has opposed this patent. As a matter of fact, in case of the issue of a patent, other multinational companies should pay the rights or to be sued for penal and civil reasons. The Board has defined the applicant as “the man in the street”. After they had used this expression too many times, the applicant highlighted the fact that his application was linked to the interests of many multinational companies. The Board members answered they knew it and then they stopped using the expression “man in the street”. On the appellant’s opinion, this reaction is very strange, and he could assume that the Board could have been affected by the principles of the art. 24(3) where the suspect about the Boards possible interests is sufficient in order to be judged in relation to the article. In fact, no multinational company opposed to the appellant’s patent. However, the appellant is already in touch with the representatives of several multinational companies which are using the idea and principles of this patent demand. Some multinational companies contested the validity of his Italian patent, already issued, and they said to be confident of EPO’s decision. However, the same multinational companies have not opposed to the Italian patent how it is legally demanded, and how the appellant told them to do. Other multinational companies, when the European application was just being carried out, they contested the validity of the patent request, on the basis of grounds not legally valid. For this reason, if the appellant’s European patent was accepted, they would be subjected to serious legal, civil and penal consequences. That’s why, it is possible to assume that the Board’s actions and decisions (violating several articles and rules of EPC) could be linked to those interests. […]”.
The Enlarged Board does not share this opinion:

[5] The first ground raised in the petition is under A 112a(2) (a), namely that members of the Board 3.5.03 took part in the case despite the provisions of A 24(3) in view of a suspicion that the Board’s actions and decisions could be linked to the interests of multinational companies opposed to the petitioner’s patent application.

The only evidence relied on for any such link is that Board 3.5.03 used the term “man in the street” of the petitioner. But this was in the context of Board 3.5.03 stating that it treated al1 parties equally. In English the term “man in the street” has no pejorative associations, but is commonly used to describe an average citizen. The Enlarged Board can see no support whatsoever for the allegation that members of Board 3.5.03 were influenced in their decision by any bias against the petitioner or any bias in favour of large multinational companies.

The petition thus cannot succeed on this ground. […]

Should you wish to download the whole decision or have a look at the file wrapper, just click here.

Friday, 24 December 2010

T 1624/08 – Still Credible

As the Boards have often pointed out, when comparative tests are chosen to demonstrate an inventive step, the nature of the comparison with the closest state of the art must be such that the effect is convincingly shown to have its origin in the distinguishing feature of the invention (see e.g. T 197/86).

As we shall see in the present decision, this does not mean that minor differences in the experimental conditions cannot be accepted, especially when the effect obtained is considerable.

The patent proprietor filed an appeal after the Opposition Division had revoked its patent. After having found the claimed subject-matter to be novel, the Board assesses compliance with A 56.

[4.1] The patent in suit is directed to a method for producing an amide involving the preparation of an intermediate mixed anhydride. It is not disputed by the parties that document D3 also relates to such a method, involving the same starting products than the process according to claim 1 in dispute and that document D3 discloses already the combination of Boc-amino protecting groups (named tertiarybutyloxycarbonyl) with the use of N-methylmorpholine as a base […]. Although document D3 describes a specific order of addition of the reactants, namely the addition of the carboxylic acid activating agent, i.e. isobutyl chloroformate, to N-methylmorpholine and an acid, i.e. carbobenzoxyglycyl-L-phenylalanine […], it is further accepted by both parties that document D3, in its general teaching, does not define the order of addition of the reactants […], so that the presently claimed process is encompassed by the teaching of document D3. Therefore, the Board considers, in agreement with both parties, that document D3 represents the closest state of the art and, hence, takes it as the starting point for assessing inventive step.

[4.2] Having regard to this prior art, the [patent proprietor] submitted that the technical problem underlying the patent in suit was to provide a method for producing an amide improving the selectivity for the desired product, and improving thereby the yield of the reaction.

[4.3] The solution to this problem proposed by the patent in suit is the method according to claim 1, which is characterized by the specific order of addition of the reactants, i.e. adding the carboxylic acid and the N-methylmorpholine to a solution of a carboxylic acid activating agent.

[4.4] In order to demonstrate that the technical problem as defined above has effectively been solved by the claimed method the [patent proprietor] relied on the results observed in example 12 and comparative example 2 of the patent specification.

According to example 12 the claimed process involving the required order of addition of reactants, i.e. adding a substrate solution containing the acide and N-methylmorpholine to the carboxylic acid activating agent isobutylcarbonate, achieves a yield of 96,0% of the desired amide. When reverting the order of addition of the reactants in comparative example 2, namely when adding the isobutylcarbonate to the acide and N-methylmorpholine the yield achieved is only 60.7%.

It is thus credible that the claimed process which is characterized by the specific order of addition of the reactants improves the yield of desired product. The Board is thus satisfied that the technical problem as defined above is effectively solved by the claimed process.

The [opponent] contested the fairness of the comparison arguing that during the work-up of the product the acidic treatment was not exactly the same in example 12 and in comparative example 2. In addition, the method used for determining the yield was also different.

However, in both examples the obtained organic layer was treated with the same acid, i.e. hydrochloric acid which differed only in its concentration (1% versus 1.8%). In addition liquid chromatography was used for the determination of yields in both examples, although example 12 was carried out with high performance liquid chromatography whereas comparative example 2 involved silica gel liquid chromatography.

The [opponent] who contested the results observed and had thus the onus of proof of his allegation did not rely on any evidence substantiating that these minor differences have an impact on the yield obtained. In these circumstances, in the present case where a large difference of yield in the desired amide is observed, i.e. 60% according to the comparison versus 96% according to the invention, which represents an increase of about 50% in yield, the improvement shown by the [patent proprietor] is so large that it remains credible irrespective of the above differences (see T 1711/06 [3.5.2]).

This argument of the [opponent] must therefore be rejected.

Notwithstanding this finding, the Board finally found the requests on file to lack inventive step and dismissed the appeal.

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For related decisions, click here and here.

Thursday, 23 December 2010

T 1079/07 – A Matter Of Courtesy

The Opposition (OD) having revoked the opposed patent for the reason that the claimed invention was not sufficiently disclosed, the patent proprietor filed an appeal. The Board comes to the conclusion that none of the requests on file are allowable. It then deals with the opponent’s request for apportionment of costs.

[4.1] A 104(1) provides that “each party to the opposition proceedings shall bear the costs it has incurred, unless the Opposition Division (OD), for reasons of equity, orders, in accordance with the Implementing Regulations, a different apportionment of costs”.

By virtue of A 111(1) this provision applies also to opposition appeal proceedings.

[4.2] In support of its request for an apportionment of costs, the [opponent] has made reference to decision T 937/04 of the boards of appeal, in which it was held that [a patent proprietor], by informing solely the EPO and not the other parties only one working day before the oral proceedings (OPs) of its intention not to attend the OPs, had failed to exercise all due care required.

The then deciding board based this finding on the understanding that, if a party decided only shortly before the date scheduled for OPs that it was not going to attend them, its equitable obligations extended to informing any other parties to the appeal proceedings of its decision not to attend OPs (see point [5.1] of the reasons for the decision).

In the present board’s view, the factual situation of the case at issue is decisively distinguished from that of case T 937/04 because of the fact that the [patent proprietor] had informed the EPO of its intention not to attend the OPs already two weeks before the scheduled date of the OPs.

Under these circumstances, the [patent proprietor] cannot be held responsible for an unfortunate course of actions as a consequence of which the information reached the [opponent’s] representative only two working days before the scheduled date, nor for the fact that travel arrangements for the representative had been such that they could no longer be cancelled at that time.

Already for this reason a different apportionment of costs in favour of the [opponent] is not considered to be equitable.

[4.3] Besides, the board does not share the standards based on which the discretion in case T 937/04 was exercised. In the present board’s view, a party to proceedings before the EPO has a right to be heard in OPs but has no obligation to attend OPs to which it had been summoned (see for instance T 544/94 [5]). Thus, to inform the EPO and any other party to the proceedings about the intention not to attend OPs in due time before the scheduled date is a matter of courtesy and respect rather than a procedural obligation to be met.

In order to judge a late announcement of an intended absence to OPs as constituting a “culpable action of an irresponsible or even malicious nature” (see T 937/04 [5.1] of the Reasons) strong supporting evidence for such an allegation would be required.

Moreover, the mere fact that a party does not attend OPs does not mean by itself that its case will be lost, making the presence of the other party unnecessary. The outcome of a case cannot be certain until the board has taken its final decision. There can be no doubt in this context that views expressed in a board’s preliminary communication are nothing but provisional assessments which are by no means binding. Thus, however critical such views would be, there is no guarantee that they reflect the final decision. Therefore, each party is obliged to decide on its own and independently from the behaviour of another party to the proceedings whether or not to attend OPs. […]

The request of the [opponent] for apportionment of costs is rejected.

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NB: Remember that epi members are expected to act in a corteous way, as can be seen here.

Wednesday, 22 December 2010

T 716/08 – Does It Work?

This decision deals with the refusal of an application by the Examining Division (ED).

Claim 1 of the main request on file read:

1. Use of an 48 kD infectious Salmon anaemia virus (ISAV) protein or an immunogenic fragment of said protein, said protein or immunogenic fragment thereof having an amino acid sequence that is at least 70% homologous to the amino acid sequence as depicted in SEQ ID NO: 2, for the manufacturing of a vaccine for combating ISAV infections.

The Board carries out an inventive step assessment, and dwells on one of the less known steps of the problem-solution approach (incidentally, the one which, as far as I can see, candidates are not expected to implement in papers B and C of the EQE): the evaluation of whether the objective technical problem is indeed solved.

[11] Starting from document D6 and in the absence of evidence of an improvement over the subject-matter disclosed in that document, the problem to be solved is considered to be the provision of an alternative vaccine against ISAV.

[12] The solution to this problem as stated in the claims is the use of a 48 kDa protein having the sequence described in SEQ ID No. 2, variants thereof or related compounds, such as recombinant DNA molecules.

[13] A first issue in the present case is whether or not the disclosure in the application provides evidence that the problem [...] above has been solved. In the decision under appeal the ED held that it was not plausible, on the basis of the disclosure in the application and in particular Examples 4 and 5, that the solution, as then claimed in claims 10 to 16, solved the problem underlying the application.

[14] The boards have regularly considered in the context of the evaluation of inventive step whether or not “the problem is solved” (see for example T 187/93 [19] or T 939/92 [2.4.1 or 2.5.1]) and have in cases where they were not satisfied that this was so, i.e. that what was claimed was de facto a solution to the problem, denied an inventive step (see for example T 210/02 [5, § 10 et seq.] or T 1329/04 [6-11]) or required a reformulation of the problem (see for example T 939/92 [2.5-6] or T 87/08 [6.3]).

[15] The verification of whether or not the claimed solution actually solves the problem, i.e. that the claimed subject-matter actually provides the desired effect, is according to T 1329/04 [12] to be made on the basis of data in the application. Common general knowledge at the priority date may be used to interpret the teaching in an application or a patent (see for example T 293/04 [21] or T 665/05 [16]). Post-published evidence can only be used to back-up the teaching derivable from the application (for example T 1329/04 [12]).

[16] As to the quality of the evidence, “absolute proof” of the achievement of an effect is not required for the effect to be plausible. Thus, in the case of a vaccine, it is not required that protective immunity is actually demonstrated in the target organism. It suffices that the data indicate that a compound could be a useful candidate for a vaccine (for example T 903/05 [19]; T 391/07 [20]; T 394/06 [13, in combination with page 6, last paragraph to page 8, first paragraph of “Facts and Submissions”.)

[17] The present application discloses in Example 2 that the 48 kDa protein of ISAV was found by screening of a bacteriophage lambda cDNA library with an anti-ISAV polyclonal rabbit serum.

[18] In a lambda bacteriophage cDNA library each bacteriophage particle expresses on its surface a protein corresponding to the cDNA contained in that particle. By probing such a library with a monoclonal antibody preparation or a polyclonal serum, proteins reacting with the antibodies, and thus also the corresponding cDNAs, are identified.

[19] In the present case the antibodies used for probing the library are in the form of a polyclonal serum obtained from rabbits immunized with whole ISAV particles.

[20] At the priority date it was known from document D4 that ISAV had four structural proteins having molecular masses as determined on an SDS-gel of 74, 53, 43 (or 46 depending on the virus isolate) and 26.5 kDa [...].

[21] The appellant submits that the 53 kDa protein disclosed in document D4 is equivalent to the 48 kDa protein of the application. The board has no reason to doubt this submission.

Thus, it is concluded that the 48 kDa protein of the application is one of the four viral structural proteins of ISAV as disclosed in document D4.

[22] It is, as the appellant agreed at oral proceedings, common general knowledge that structural proteins of a virus, i.e. the proteins involved in formation of the viral capsid, or in the case of enveloped viruses, additionally those situated in the viral envelope, are potential candidates for the inclusion in subunit vaccines. This is so because structural proteins are present at the outside of the virion and are thus exposed to the immune system. Therefore, it is expected that upon infection with ISAV, antibodies are preferably elicited against these structural proteins and that these antibodies may achieve neutralization of the virus. Therefore, vaccine preparations containing, instead of for example the whole inactivated virus, only one (or more) of the structural proteins, i.e. so-called subunit vaccines, would also be expected to have the same effect, i.e. to elicit neutralizing antibodies.
[23] That common general knowledge of the skilled person is reflected by the disclosure in document D6. It reports that one of the structural proteins of ISAV, SP-1 which, as submitted by the appellant at the oral proceedings, corresponds to the 74 kDa protein disclosed in document D4, was identified by screening with a polyclonal anti-ISAV rabbit serum [...] and that this protein is expected to induce a protective immune response in fish against infection with ISAV [...]. 
[24] In view of the case law referred to in points [15] and [16] above and in the light of the observations in points [17] to [23], in particular point [22] above, the board considers that the mere presence of antibodies against the 48 kDa protein in the rabbit serum used for screening the lambda bacteriophage cDNA library according to Example 2 of the application is evidence that the 48 kDa protein is antigenic and, consequently, could also be a useful constituent of a subunit vaccine. 
[25] The polyclonal serum according to the application was obtained after immunisation of rabbits with ISAV particles. The target organism for vaccination with the 48 kDa protein is however salmon. In the decision under appeal the examining division states that immunogenicity in rabbits does not provide a basis to a claim to vaccines for fish [...]. The board notes however, that there is no evidence before it demonstrating that the properties of the immune system of salmon and rabbits are of a totally different nature. 
[26] Thus, in conclusion the board is satisfied in view of Example 2 that the subject-matter of the claims is a solution to the problem formulated above, i.e. the provision of an alternative vaccine against ISAV. 
[27] As a consequence the post-published evidence, i.e. document D7, is not needed to back up the disclosure in the application. However, for completeness, the board notes the following with regard to the examining division’s view on document D7 [...]. 
[28] Document D7 discloses that salmon were vaccinated with the 48 kDa protein expressed in E. coli (two groups) or with saline (two groups), respectively. All groups were challenged eight weeks after vaccination by infection with ISAV. The cumulative mortality of the saline group was 75%, that of the vaccinated group 57% [...]. 
Thus, in the board’s view, these data demonstrate that the E. coli-expressed 48 kDa ISAV protein has a protective effect against IASV infection. Whether or not this effect is “very significant” is irrelevant, since absolute proof of the usefulness of the compound as a vaccine is not necessary […].

Finally the Board found the claims on file to be inventive.

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Tuesday, 21 December 2010

T 1098/07 – A Pardonable Error

This decision deals with an appeal by the opponent following the rejection of the opposition by the Opposition Division (OD). The Board comes to the conclusion that there is no reason not to maintain the patent as granted. It then deals with a request for reimbursement of the appeal fee, based on a procedural violation. The Board is of the opinion that not all failures to consider evidence are substantial procedural violations: some are more pardonable than others.

[8.1] The [opponent’s] contentions in this regard concern the decision’s failure to mention or discuss in detail material and arguments submitted in the course of the opposition proceedings. Drawing E1 and photograph E2 are undoubtedly absent in the decision, as is any mention of the sketch drawn on a flipchart during the oral proceedings (OPs) before the Board. E3 to E11 on the other hand, though indicated, are not discussed in any detail.

[8.2] Failure to consider evidence will normally constitute a substantial procedural violation in that it deprives a party of basic rights enshrined in A 117(1) and A 113(1). Thus, in T 135/96 [3], ignoring documents (and arguments) relevant to inventive step was found to violate the party’s right to be heard. T 1110/03 made a similar finding where indirect evidence substantiating an allegation of fact relevant to novelty was disregarded.

[8.2.1] In this Board’s opinion, certain factors may nevertheless mitigate the severity of the violation. Thus, whether or not a failure of the decision to expressly mention material offered by a party in support of its case constitutes a substantial procedural violation, in particular of the rights to present evidence and be heard, will depend on the (prima facie) significance and evidentiary value of such material. Here the questions to be asked are: what facts is it intended to prove, how relevant is it to these facts and how likely is it that it will prove them? The circumstances under which the material is submitted - e.g. whether its role is made sufficiently clear and whether it is accompanied by arguments - may conceivably also play a role.

[8.2.2] Turning first to E1 and the sketch, the Board notes that E1 is merely an enlargement of part of a figure in D1, produced to better view its contents. The sketch is intended to illustrate the play of forces in the claimed coupling as understood by the [opponent]. Both serve merely as aids in distilling facts from the patent and the prior art and should rather be considered an integral part of the arguments. In as far as these are addressed in the decision […] the Board sees no reason why such aids should find an express mention in the decision.

[8.2.3] Photograph E2 of a coupling element was presented (together with E1) with the submission of 5 September 2006 “for easy assessment of the disclosures of D1”. E3 to E11 were said to pertain to an object sold by the Proprietor and were intended for “a better understanding/assessing of the ... patent” […]. As noted above, such material, which has no apparent link to D1 respectively the patent, can have little bearing on the relationship between D1 and the claimed invention. That is determined solely by the terms of D1 and the patent respectively. The significance and evidentiary value of this material are plainly limited.

What is more, this material was accompanied by little or no written comment. The only relevant passages are found in the letter of 5 September 2006 […] and 14 March 2007 […]. These state that it serves a better understanding of D1 and the patent, while describing E2 as “upper, front and side real size photographic views of the collar 11 of Figure 1 [of D1]”. No detail is given as to the material’s origin or how it might improve an understanding of D1 or the patent. Otherwise the submissions refer only to D1 (or D2) and the terms of the patent. Likewise, the minutes of the OPs before the OD, which are uncontested by the [opponent], also do not record extensive arguments concerning the above material.

In summary E2 to E11 thus, objectively, have little bearing on the main issues, and the [opponent] has made little effort to demonstrate otherwise before the OD. It appears unreasonable to the Board to require the OD to fully acknowledge, i.e. mention and discuss in detail, such prima facie irrelevant material, especially where the [opponent] has himself not made this effort.

The Board would agree that the OD’s failure to do so may not demonstrate the highest level of procedural rectitude. However, given that the underlying issue is addressed […], it is a pardonable error that has not deprived the [opponent] of any fundamental rights.

[8.3] As regards the further contention that the decision fails to address crucial arguments and (as a result) does not present a full line of reasoning, the Board firstly notes that according to established jurisprudence, cf. T 70/02, R 68(2) EPC 1973 does not require a decision to deal with all arguments in detail. In addition to the logical chain of facts and reasons, it should include some reasoning regarding the crucial points of dispute.

[8.3.1] In this regard, the decision does in fact address the central discussion concerning the terms “conical” and “tapering”, which E1 to E11 and the sketch were intended to illuminate, see reasons 5, first three paragraphs. The first paragraph summarizes the [opponent’s] arguments as “conical ... also encompasses tapered elements” and “a frustum-conical piece ... could also be used to describe a straight-sided one”. In the following paragraph the decision then refutes these arguments by stating that “anything that is defined as conical is by definition curved and tapered”. These passages are admittedly somewhat succinct. However, it shows that the OD identified as a central point of contention differences in interpretation of the term “conical” and that it understood this term in a narrower sense than just “tapered”. In the third paragraph this interpretation then serves to differentiate the invention from D1, which, in the division’s view, does not possess conically shaped tongues or a frustum-conical support element.

[8.3.2] These elements together constitute what the Board recognizes as a line of reasoning, which gives a fair idea of where the division saw differences between the invention and D1, and why. In the Board’s view this information should be sufficient to enable the adversely effected party to identify cardinal points of dispute - namely the differences in interpretation of “conical” - and to draft its appeal accordingly. Here also the Board is unable to detect a substantial procedure violation.

[8.4] The Board cannot allow the appeal on its merit, see above, nor has it found that a substantial procedural violation occurred.

As neither of the conditions for reimbursement of the appeal fee under R 67 are met, the request for reimbursement must fail.

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Monday, 20 December 2010

T 296/08 – Essential Yet Unclaimed?

When a feature is presented as essential in an application, does it have to be incorporated into the claims ? The present decision suggests that there are special cases where it does not.

Claim 1 of the divisional application refused by the Examining Division (ED) read:

1. A coning compensation method for use in a strapdown inertial navigation system, the method utilizing the incremental angles of rotation of a coordinate system expressed as a vector Δθ(k,n,m) and measured in successive time periods to obtain an estimate of the coning compensation for NK successive time periods, Δθ(k,n,m) corresponding to the (mNK+nK+k)’th time period, k being equal to 5, the method comprising calculating the R(m) component of the coning compensation according to the formulas

n taking on integer values from 1 to H, H being equal to 3, U(h,k) and V(h,k) being predetermined numbers for all values of h and k, W(h) being a predetermined number for each value of h, and the symbol x denoting the vector cross-product operation.

The Board first states that the claims on file overcome the A 76 objection and then continues:

[2] A further objection under A 84 raised by the ED with respect to the independent claims 1 and 13 is not confirmed by the Board in view of extensive arguments put forward by the appellant in its statement of grounds.

The ED argued that the term 1/2 R(0,m) + R(m) was an essential feature of the invention because it was stated in the description of the parent application as originally filed:

“The sum of quantities 1/2 R(0,m) and R(m) is the coning compensation and corresponds to the integration of the second and third terms in equation (2).”

This term should therefore appear in the independent claims to meet the requirements of A 84.

[3] However, the original versions of the corresponding claims 1 and 3 of the parent application do not contain this feature. It is rather indicated in these claims (see the last feature in each), that: “...the estimate of the coning compensation comprising R(m)”.

Therefore the estimate of the coning compensation includes R(m) as an essential element. This is, however, not in contradiction to the coning compensation being the sum of 1/2R (0,m) and R(m).

As far as the problem underlying the claimed subject-matter is concerned, the relevant prior art determines whether there is a difference solving a reasonable technical problem, which would be the objective technical problem, accordingly.

However, in the absence of any relevant prior art - only documents describing technical background (category A) are cited in the European Search Report - there is no reason to limit the claims any further and reformulate the technical problem.

[4] Therefore the Board concludes that the subject-matter of the independent claims meets the requirements of A 76 and A 84 and sees no reason to question novelty and inventive step over the prior art. […]

I may be wrong, but I understand this to mean that even if a feature was described as essential in the application (which is not beyond all doubt in the present case), it does not have to be incorporated into the claims if the claims as filed did not contain it. 

In such a case, will it be necessary to amend the description in order to eliminate the discrepancy between the description and the claims?

The Guidelines (C-III 4.3(ii)) have an interesting paragraph on inconsistencies regarding apparently essential features:
… it may appear, either from general technical knowledge or from what is stated or implied in the description, that a certain described technical feature not mentioned in an independent claim is essential to the performance of the invention, or, in other words, is necessary for the solution of the problem to which the invention relates. In such a case, the claim does not meet the requirements of A 84, because A 84, first sentence, when read in conjunction with R 43(1) and (3), has to be interpreted as meaning not only that an independent claim must be comprehensible from a technical point of view but also that it must clearly define the subject-matter of the invention, that is to say indicate all the essential features thereof (see T 32/82). If, in response to this objection, the applicant shows convincingly, e.g. by means of additional documents or other evidence, that the feature is in fact not essential, he may be allowed to retain the unamended claim and, where necessary, to amend the description instead. The opposite situation in which an independent claim includes features which do not seem essential for the performance of the invention is not objectionable. This is a matter of the applicant’s choice. The examiner should therefore not suggest that a claim be broadened by the omission of apparently inessential features; ... (my emphasis)
I for one would be very reluctant to amend the description because such an amendment definitely invites A 123(2) objections in later opposition or nullity proceedings. Depending on the exact wording of the application before and after the amendment, such objections might be very hard to counter. So unless the Examiner obliged me to do so, I would not take the initiative of amending the description.

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Saturday, 18 December 2010

Interpretative Spotlight: “a”

[1] Claim 1 as granted was directed to
“a method to detect the presence of a bacterial species” (in bold by the board),
whereas claim 1 of the main request relates to
“a method to simultaneously detect the presence of bacterial species” […].
In the board’s judgment, it is clear from this initial wording that both methods are concerned with different subject-matter. Indeed, when reading the description of the patent-in-suit, these two methods correspond to two different preferred embodiments, namely a first embodiment directed to detection of a single bacterial species and a second embodiment directed to the simultaneous detection of several bacterial species […]. The subject-matter of claim 1 as granted has thus now been changed to a different embodiment and thereby, the scope of protection of the claim has been extended.

[2] Contrary to [the patent proprietor’s] argumentation […], the board does not see any indication in granted claim 1 or in any of its dependent claims that could cast serious doubts on the meaning indicated above of granted claim 1.

The board fails to see any ambiguity in the initial wording of granted claim 1 nor is this ambiguity introduced by any of the other granted claims. As stated in the description of the patent-in-suit […], the use of several primers specific for a single bacterial species in a multiplex amplification or multiplex PCR may well be performed to increase the ubiquity of the assay […], as rightly pointed out by [the opponent]. Granted claim 8 may also be understood as referring to a sample consisting of one or more bacterial colonies (isolates or strains) of a single bacterial species (target species or species of interest) which might be used to check both the ubiquity and the specificity of the primer or probe used, as also explained in the patent-in-suit […].

[3] [The patent proprietor] referred to three decisions of the Boards of Appeal, namely decisions T 190/99, T 579/01 and T 371/88 […], which, in its opinion, support its case […].

The board cannot however follow [the patent proprietor’s] arguments for the following reasons:

[3.1] As stated [above], the initial wording of granted claim 1 has a clear and unambiguous technical meaning and no ambiguity is introduced by any of the dependent claims or by claim 1 itself.

For a mind willing to understand, as defined in decision T 190/99, the meaning of, or the interpretation given to, granted claim 1 is clear and technically meaningful. Indeed, it corresponds to one of the preferred embodiments explicitly disclosed as such in the patent-in-suit. Thus, there is no need to seek for alternative or different interpretations of granted claim 1.

[3.2] Indeed, as indicated in decision T 579/01, the “scope of protection” refers to the total protection conferred by the granted claims and not by the individual granted claims. However, the subject-matter of claim 1 of the main request cannot be seen as being comprised within the “total scope of protection” conferred by, or associated with, the claims as granted because none of the granted claims, explicitly or implicitly, covers a method to simultaneously detect the presence of several bacterial species, i.e. the subject-matter of claim 1 of the main request.

[3.3] According to decision T 371/88, the first condition for deleting or replacing a restrictive feature from a granted claim by a less restrictive feature is that the restrictive feature is so unclear in its technical meaning in the context of the claim that the extent of protection can only be determined by interpreting the claim by reference to the description of the patent (cf. T 371/88 [part (a) of the headnote]). In the present case, this first condition is certainly not given, since, as discussed [above], the technical meaning of the feature “a bacterial species” in granted claim 1 is completely clear, unambiguous and not open to interpretation. Thus, the first criterion set out in decision T 371/88 does not apply to the present case.

[4] Therefore, the main request is considered to contravene the requirements of A 123(3).

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Friday, 17 December 2010

T 837/07 – One Last Chance?

The main request and the first and second auxiliary requests on file having been found to contravene A 123(3), A 84 and A 123(2), respectively, the Board has to deal with the request to adjourn the oral proceedings (OPs) in order to give the patent proprietor the possibility of drafting and submitting a further auxiliary request. In case you had doubts – this request is not successful:

[12] Article 12(2) of the Rules of Procedure of the Boards of Appeal (RPBA) requires the statement of grounds of appeal to contain a party’s complete case. Article 13 RPBA, which deals with the amendments to a party’s case, states in paragraph (1) that
“any amendment to a party’s case after it has filed its grounds of appeal ... may be admitted and considered at the Board’s discretion” and that this discretion “shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.”
[13] The objections of lack of clarity of the subject-matter of claim 1 of the first auxiliary request were already raised and discussed in detail at the OPs before the first instance […]. Although, in contrast to the board […], these objections were considered not to arise from the amendments made during the opposition proceedings and they were not decided upon by the opposition division (OD) […], they were nevertheless on file and part of the proceedings - as shown by their presence in [the opponent’s] statement of grounds of appeal, even though admittedly under other EPC articles […]. However, none of the claim requests filed by [the patent proprietor] - in its grounds of appeal or in its reply to those of [the opponent] - took into account these objections.

[14] It was only after the board’s communication issued under Article 15(1) RPBA in which the parties’ attention was drawn again to these objections […], that [the patent proprietor] filed - one month before the date scheduled for the oral appeal proceedings - a second auxiliary request specifically addressing them and maintaining a first auxiliary request that clearly did not address any of these objections […].

[15] It derives directly from the review nature and the judicial character of the appeal proceedings (cf. “Case Law”, supra, VII.E.1, page 821), that claim requests filed at the OPs in appeal before the board are to be considered in principle as late-filed requests and, as a result thereof, their admissibility into the appeal proceedings is to be fully justified before the board can examine them and decide thereupon. In the present case and in view of the facts mentioned […] above, the board considers that, at this stage of the proceedings and in the light of the amendments introduced into [the patent proprietor’s] second auxiliary request […], the introduction of a new auxiliary request into the appeal proceedings with the sole purpose to overcome the very same formal objections which allegedly were already addressed by that second auxiliary request, cannot be justified.

[16] According to [the patent proprietor], it is established case law of the Boards of Appeal that the patentee should always be given a “last chance” to save its patent […]. It has been thoroughly discussed and clearly established by the Boards of Appeal that there is no absolute right for a patentee to such a “last chance” request. On the contrary, the admissibility of a late filed request is always a matter of the board’s discretion. Moreover, as stated inter alia in decision T 446/00 [3.3], the concept of a “last chance” suggests one last chance at the end of the proceedings and not multiple “last chances” on numerous occasions during the course of the appeal.

In the present case, the possible admission into appeal proceedings of a new auxiliary request could hardly be seen as the patentee’s “last chance” since that new request would only be filed to overcome formal issues discussed at length and in detail during both opposition and appeal proceedings but it would still leave completely open to discussion substantive issues on novelty and inventive step raised during these proceedings […].

[17] Thus, the board comes to the conclusion that [the patent proprietor’s] request for an adjournment of the OPs in order to draft and submit a set of claims as a further auxiliary request is, at this stage of the proceedings and after consideration of all the above facts, not allowable and cannot be granted. […]

The patent is revoked.

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