T 1067/08 – No Forum Shopping

The patent proprietor appealed against the decision of the Opposition Division (OD) to revoke the patent.

Claim 15 of the patent as granted read:

A granulate comprising dried granules formed from a phytase and a solid carrier which comprises at least 15% (w/w) of an edible carbohydrate polymer.

During the opposition proceedings, the patent proprietor filed an auxiliary request file 5 of which read:

A granulate comprising dried granules formed from a phytase and a solid carrier which comprises at least 30 % (w/w) of starch, wherein the range of size of the granulate is from 100 mym to 2000 mym, preferably 200 to 1800 mym and most preferably 300 to 1600 mym.

As the OD made A 123(2) objections, the patent proprietor filed an amended main request claim 3 of which read:

A granulate comprising dried granules formed from a phytase and a non-fibrous solid carrier which comprises at least 30 % (w/w) of starch, wherein the range of size of the granulate is from 100 mym to 2000 mym and the granulate has an activity of at least 6000 FTU/g.

During the oral proceedings (OPs), the OD informed the parties that this request did not comply with A 123(2). The patent proprietor then filed a set of amended claims to become its sole request. Claim 1 of this request read:

A granulate comprising dried granules formed from a phytase and a non-fibrous solid carrier which comprises at least 15% (w/w) of an edible carbohydrate polymer and the granulate has an activity of at least 6000 FTU/g.

The Board having announced that this request was “not allowable”, the patent proprietor affirmed that he did not want to file any further request. Thus the patent was revoked.

The patent proprietor filed an appeal and requested that the latest main request be admitted into the proceedings and the patent be maintained on the basis of that request.

[2] The patent in suit was revoked for non-compliance with A 113(2), following the OD’s decision not to admit the proprietor’s sole request as filed during the OPs (that is what was clearly intended by the OD and what was understood by the parties, even if the division said the request was “not allowable” […]) and the subsequent refusal of the proprietor to amend that request and/or to file auxiliary requests. Whether or not the decision under appeal correctly relied on the absence of a text of the patent submitted or agreed by the proprietor depends, thus, on the answer to the preliminary question whether or not the OD was right in not admitting the proprietor’s final request filed during the OPs on the ground that its filing constituted an abuse of the proceedings.

[3] In principle, during opposition proceedings a patent proprietor is free to withdraw at any time a request which contains limitations made in an attempt to overcome objections raised against its patent, or to amend it subsequently and, in particular, resume a defence of the patent as granted, unless this would constitute an abuse of procedural law (established case law starting with T 123/85).

In line with this principle, R 71a EPC 1973, now R 116, gives the OD the discretionary power to refuse new requests for amendments, if amended claims are presented after the final date fixed under that provision.

This applies in particular to requests which are, like the one under consideration, presented for the first time during the OPs (case law of the boards of appeal, see e.g. T 64/02). The purpose of this provision is in particular to prevent parties from seeking unjustified procedural advantages by abusive tactics (nemo auditur propriam turpitudinem allegans - T 1705/07, it being, however, in this board’s view, not a requirement for procedural abuse that the party responsible also acted in bad faith) in disregard of procedural economy and to the disadvantage of other parties.

Therefore, any amendment has to be carried out in the most expedient manner, which has to be established by the OD taking into account the interests of all parties (T 382/97), and the power to refuse late requests must be exercised by considering all relevant factors which arose in a particular case, taking account inter alia of whether there were good reasons for the late filing, whether the other parties are taken by surprise and whether new issues are raised by the amendments made.

[4] The OD’s finding that the filing during the OPs of the new claims according to the proprietor’s sole and final request lacked adequate justification and disregarded the legitimate interests of the other parties, and therefore amounted to an abuse of procedure, was based on the following facts and considerations:

• The [patent proprietor’s] conduct up to the OPs suggested that it intended to defend the patent only in a restricted form, within the amendments made in preparation for the OPs. There was no indication that the proprietor would defend any broader subject-matter and what it might be.
• There were no adequate objective reasons which would have justified the other parties having to prepare and discuss any further issues arising from the submission of the much broader claims comprising the feature “at least 15% (w/w) of carbohydrate polymer”, but no longer any feature regarding the particle size.
• There was nothing preventing the proprietor, who was aware, inter alia from the preliminary opinion of the OD, of the objections under A 123(2) to the feature “at least 30% (w/w) of starch”, from filing the new claims according to his final request in time. As these claims comprised a more general definition of the subject-matter and would involve reviewing a large number of submitted prior-art documents, the proprietor should have realised that the filing of such new claims in advance of the OPs was required, having regard to the legitimate interests of the other parties to the proceedings, including their right to duly prepare for discussion of the new claims.
• The proprietor’s contention that the negative finding on compliance with A 123(2) of the then pending request came as a surprise was unfounded: proprietors should be aware that new sets of claims have to be examined for compliance with A 123(2), even more so in the present case where the critical feature had already been questioned by the opponents and by the OD during the written proceedings.

[5] As regards the [patent proprietor’s] arguments in support of its contention that the opponents could not have been taken by surprise by the late filing of the eventual single request, the board observes the following:

[5.1] The [patent proprietor’s] submission that the subject-matter of the new request was identical to the subject-matter as granted and thus had been discussed since the beginning of the opposition proceedings […] is not supported by the facts. Claim 1 according to the eventual single request submitted during the OPs before the OD is not at all identical to the text of the corresponding Claim 15 as granted. That text had never been discussed, since the [patent proprietor] had already submitted an amended version (Claim 5) in response to the notices of opposition.

[5.2] The same is true for the [patent proprietor’s] contention, during the OPs before the board, that the opponents had already been familiar with all the features of the final request and the relevant documents.

There is nothing which could justify such an assumption. Quite to the contrary. In the claims filed during the OPs the [patent proprietor] also deleted the feature concerning the particle size, a feature which had not been objected to at all. This feature had been introduced into the claims as a first reaction to the notices of opposition. It could thus have been assumed by the [opponents] that this would be one of the essential features of the subject-matter pursued during the opposition proceedings.

While it can be admitted that the replacement of the feature “at least 30% (w/w) of starch” following the OD’s negative finding on its compliance with A 123(2) was foreseeable, the [patent proprietor] has not given any reason, nor is there any apparent, for the deletion of the particle size which led to a considerable broadening of the subject-matter at a very late stage of the opposition proceedings. Such an inconsistent course of action by the proprietor was not to be anticipated by the other parties or the OD.

In addition, the new request would have raised new issues, not least because its claims differed from the subject-matter of the granted claims by a feature taken from the description, namely the “non-fibrous” solid carrier.

[5.3] Under these circumstances it is irrelevant that the replacement as such of the feature objected to in amended claims could not have been a surprise to the other parties. Nor is it relevant that, as the [patent proprietor] alleged before the board, the opponents were facing as a result of their attacks, considerably less complex claims.

As regards the [patent proprietor’s] argument that the admission of the amended claims would have been justified in view of the fact that three of the four opponents were apparently willing to discuss the new claims after a (substantial) break for preparation […], it is pointed out that the concept of procedural abuse is not limited to conduct necessitating an adjournment of the OPs, and that such necessity is not solely determined by the affected parties’ view of whether or not an adjournment of the OPs is necessary or appropriate.

[6] For the reasons given by the OD and those given above, the board is satisfied that the OD, in taking the view that the filing of the amended claims during the OPs was an abuse of procedure and therefore declining to admit them into the proceedings, has correctly exercised its discretionary power, namely on the basis of the given relevant facts, in accordance with the right principles and in a reasonable way. There is therefore no reason to overrule the OD’s discretionary decision not to admit the late-filed claims (cf. G 7/93).

Main request

[7] The [patent proprietor’s] main request is identical to the (then sole) request which was not admitted into the opposition proceedings. The [patent proprietor] argued that during the OPs before the OD it had seen no reasonable chance of success with that request or any new requests, and had therefore decided to seek redress at the department of second instance. Therefore, it should be given the opportunity to defend that request before the board of appeal.

[7.1] The purpose of the inter partes appeal procedure is mainly to give the losing party a possibility to challenge the decision of the OD on its merits and to obtain a judicial ruling on whether the decision of the OD is correct (G 9/91 and G 10/91). The appeal proceedings are not about bringing an entirely fresh case; rather, the decision of the board of appeal will in principle be taken on the basis of the subject of the dispute in the first-instance proceedings. The appeal proceedings are thus largely determined by the factual and legal scope of the preceding opposition proceedings and the parties have only limited scope to amend the subject of the dispute in second-instance proceedings (T 1705/07 [8.4]).

[7.2] This means that appeal proceedings are not just an alternative way of dealing with and deciding upon an opposition and that - contrary to the [patent proprietor’s] view, which apparently prompted it in the opposition proceedings to eventually limit itself to the request under consideration - parties to first-instance proceedings are not at liberty to bring about the shifting of their case to the second instance as they please, and so compel the board of appeal either to give a first ruling on the critical issues or to remit the case to the department of first instance. Conceding such freedom to a party (and/or to the department of first instance) would run counter to orderly and efficient proceedings. In effect, it would allow a kind of “forum shopping” which would jeopardise the proper distribution of functions between the departments of first instance and the boards of appeal and would be absolutely unacceptable for procedural economy generally. In order to forestall such abusive conduct, Article 12(4) RPBA provides that the Board has the power to hold inadmissible any requests which were not admitted in the first-instance proceedings.

[7.3] Hence, in the present case, neither the fact that the claims according to the main request were filed together with the notice of appeal (Article 12(1)(a) RPBA) nor the [patent proprietor’s] motives for limiting itself to the set of claims according to the single request eventually submitted in the opposition proceedings are, in themselves, a valid reason for admitting those claims into the appeal proceedings.

[7.4] Quite to the contrary: given the history of these claims, their admission by the board would be incompatible with the judicial nature of the inter partes appeal procedure and would in effect render pointless the OD’s correct decision not to admit them. Moreover, to admit the [patent proprietor’s] main request in the given circumstances would put the [opponents] in a worse position than if the request had been admitted and decided upon already by the OD. Either the subject-matter of that request would be dealt with only by the board as department of second instance, meaning higher costs and loss of one instance to the opponents, or - much more likely, as the OD has not yet decided on novelty and inventive step - the case would be remitted to the department of first instance, as requested by the [patent proprietor]. As pointed out in particular by [opponent 3], this could entail a further delay of several years before the present case would be finally settled. Such a prolongation of the proceedings is incompatible with procedural economy and would for a long time and without good reason deprive the other parties and the public of legal certainty about the validity of the patent in suit.

[7.5] For these reasons, the board has decided to exercise its power under Article 12(4) RPBA not to admit the main request into the appeal proceedings.

Auxiliary requests

[8] Similar considerations are valid for the [patent proprietor’s] auxiliary requests. Article 12(4) RPBA makes it clear that new claims, even if filed together with the notice of appeal, are unlikely to be considered if they ought to have been presented in the first-instance proceedings (T 339/06).

[8.1] Auxiliary Request 1 is, due to the deletion of the feature “non-fibrous”, even broader than the main request. The claims of Auxiliary Requests 2 and 3 contain the feature “30% w/w of starch”, Claim 1 of the latter request being identical to Claim 3 of the (main) request which the [patent proprietor] had withdrawn in reaction to the negative opinion of the OD regarding that feature’s compliance with A 123(2). By withdrawing any claim containing that feature and refusing to file any amended and/or auxiliary requests, the [patent proprietor] prevented the OD from giving a reasoned decision on that issue. Thus, if the [patent proprietor] had intended to pursue it, it ought not to have withdrawn all claims containing that feature from the proceedings (cf. T 933/04).

[8.2] As mentioned earlier, in opposition proceedings a proprietor is free to refrain at any time from filing further requests, and may then file different (new) requests in the appeal proceedings. However, contrary to what the [patent proprietor] suggested, this does not mean that these new requests then have to be admitted into the proceedings as of right. Rather, the admissibility of a request first submitted in appeal proceedings and relating to an independent claim which, although within the scope of the opposition, had not been considered in the first-instance decision has to be decided in the light of whether it could have been submitted earlier (T 339/06).

[8.3] According to the [patent proprietor], the reason for not already submitting these or similar requests in the opposition proceedings was its incorrect assumption as to the procedural consequences of not doing so. No objective reason preventing the [patent proprietor] from following the invitation by the OD has been put forward or is apparent to the board, in particular in respect of Auxiliary Request 3 which is identical to a request withdrawn in reaction to the negative (preliminary) ruling of the OD on compliance with A 123(2). The [patent proprietor’s] purported view that any new requests submitted to the opposition had no reasonable chance of success was mere speculation.

[8.4] For these reasons, the board, in due exercise of its discretionary powers, has decided not to admit Auxiliary Requests 1 - 3 into the proceedings.

[9] As there were no further requests, the procedural situation is the same as that prevailing at the end of the opposition proceedings, namely that there is no text of the patent in suit which meets the requirements of A 113(2).

This is quite consistent with the recent decisions invoking Article 12(4) RPBA, which we have seen in earlier posts (e.g. here).

Made me think of a Leonard Cohen song: “… I’ve seen the future, brother. It is murder. …” :-)

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

The file wrapper can be found here.

NB: The decision is also commented here.

T 1634/06 – Improve Your Figure

Auxiliary requests normally consist of amended claims. The present case is noteworthy because there were auxiliary requests that consisted in amendments to the drawings.

Here the applicant appealed against the decision of the Examining Division to refuse its application for lack of inventive step. 

Claim 1 before the Board read:

A method for use in an interactive television program guide implemented on user television equipment (22) for displaying programs and associated program data, the method characterised by:

storing on a digital storage device programs and program data that is associated with the programs using the interactive television program guide; maintaining on the digital storage device a directory of the program data for the stored programs using the interactive television program guide, and

providing to the user a list of selectable options, wherein a first selectable option is provided for allowing the user to access information for at least one broadcast television program and at least one recorded program stored on the digital storage device, and wherein a second selectable option is provided for allowing the user to access a list of currently stored programs from the directory.

During the appeal proceedings, on January 26, 2007, the applicant filed a new figure 5b

to replace figure 5b then on file:

In an annex to the summons to oral proceedings (OPs), the Board indicated that the new figure might be objectionable under A 123(2). The applicant then filed claims according to a new main request, a new figure 5b (“Auxiliary request #1”) and figure 5b as originally filed (“Auxiliary request #2”).

During the OPs, the applicant filed claims 1 to 8 and withdrew all previous requests. Its final requests were that the decision under appeal be set aside and a patent granted on the basis of claims 1 to 8 filed in the OPs before the board with the description and drawings on which the decision under appeal was based, except for figure 5b, which according to the main request should be that filed with the letter dated January 26, 2007. As a first auxiliary request only figure 5b of the main request should be replaced by figure 5b filed as “Auxiliary Request #1” with the letter dated 4 February 2011. As a second auxiliary request only figure 5b of the main request should be replaced by figure 5b as originally filed.

The Board found the main request to lack inventive step. When coming to this conclusion, the Board made an interesting statement on converging fields of technology:

[2.1.2] [T]he invention concerns both television technology - in particular television program guides which allow digital storage of information - and computer and computer-interface technology. In this context the board takes the view that it was well known, before the priority date of the present application, that these two areas of technology were converging. Therefore, the common general knowledge of a person skilled in the art of television program guides included common general knowledge of computers and computer interfaces in so far as it related to television technology and television program guides.

This is indeed a (novel ?) alternative to construing teams of skilled persons.

The Board also made the following comments on the auxiliary requests:

[3.1] The interpretation of claim 1 is not dependent on the content of the respective version of figure 5b. In the present case, the different presentation of the program listings grid does not change the meaning of the selectable options as claimed and is merely a matter of allowability of the respective amendment made. Hence the above analysis concerning inventive step is not dependent on the particular version of figure 5b which is part of the documents forming the basis on which grant of a patent is requested. This has also been acknowledged by the appellant. From this it follows that the first and second auxiliary requests are not allowable because of lack of inventive step of the claimed subject-matter.

[3.2] Under these circumstances there is no need for a decision on whether the inclusion of figure 5b according to the main request and the first auxiliary request respectively meets the requirements of A 123(2).

To read the whole decision, click here. The file wrapper can be found here.

T 2003/07 – Two In One, Clarity Gone

When amending claims in order to overcome prior art objections raised in opposition proceedings, one has to be careful, in particular when the claim as amended is intended to cover several distinct embodiments. It may then be preferable to have several independent claims rather than trying to find an all-encompassing claim 1. Otherwise, one might end up with unclear claims, and it will not be sufficient to insist on a particular interpretation of the claim terms to overcome clarity objections.

The present appeal was filed by the opponent after the Opposition Division (OD) had maintained the opposed patent in amended form.

Claim 1 before the Board read:

1. A door inner panel assembly (10) including a door inner panel (12) formed from a sheet material and a window regulator drive means, the window regulator drive means having a drive portion and an output shaft (32) projecting from the drive portion, the inner panel having an abutment portion (26) for cooperation with the drive portion and a shaft support portion for co-operation with a portion of the shaft remote from the drive portion to support the shaft, the abutment portion and shaft support portion being integrally formed from the same sheet material and further including a window regulator drum (44) secured on the shaft and positioned between the drive portion and the shaft support portion in which the door inner panel comprises a door inner skin connected to a door outer skin.

The opponent pointed out that the amendment (the addition of the underlined part) made the claims unclear.

The patent proprietor argued that there were two ways in which auxiliary components could be fixed to car doors. They could either be attached to a module plate (paragraph 5 of page 2) or placed in cavities of an integral pressing (“door inner skin”; paragraph 6 of page 2). The description from the final paragraph of page 2 onwards was applicable to both types of arrangement. Whilst the claims as granted covered both module plates and door inner skins, the amended claims were restricted to embodiments incorporating a door inner skin. It was clear that the term “comprise” had the narrow meaning of “consist in”, i.e. that the door inner panel was a door inner skin.

[2.1] In order to overcome an objection of lack of novelty of the subject-matter of claim 1 as granted the claims were amended in the course of the oral proceedings before the OD. The amendment consists in the introduction of the following feature taken from […] the originally filed application documents:

“in which the door inner panel comprises a door inner skin connected to a door outer skin” (hereinafter called feature i)).

[2.2] In their response to the statement of the [opponent] setting out the grounds of appeal, the [patent proprietor] contended that the word “comprises” in feature i) should be construed narrowly and simply meant that the door inner panel is the door inner skin itself […].

[2.3] Questioned by the Board the [patent proprietor] confirmed that the present wording of claim 1 was intended to relate to two arrangements.

In the first, the door inner skin is connected to the door outer skin and then the window regulator drive means and window regulator drum are mounted on the door inner skin using the integrally formed abutment portion and shaft support portion. They argued that after this had been done there resulted a “door inner panel assembly” within the terms of the claim.

In the second arrangement the door inner skin, window regulator drive means and window regulator drum were pre-assembled before the door inner skin was connected to the door outer skin.

On the other hand the amendment was intended to exclude an arrangement deemed by the OD to belong to the state of the art, in which the window regulator drive means and the window regulator drum were pre-assembled on an inner panel which was then mounted on a door inner skin to close a substantially sized opening in the latter.

[2.4] In the view of the Board these intentions cannot be effectively served by the amendment made to claim 1 in a manner which is consistent with the requirements of clarity (A 84).

The first problem resides in the reference to a “door inner skin connected to a door outer skin” (emphasis added).

With respect to the second alternative which the claim is intended to cover as described above it might, with some latitude, be possible to interpret this requirement in the sense that the door inner is to be connected to the door outer skin, in other words as a sort of confirmatory statement as to the nature and character of a “door inner skin”.

However, with respect to the first alternative described above this is not possible and the contentious term can only be understood a meaning that the door inner skin has actually been connected to the door outer skin, since it is only in this state, after the addition of the further components involved, that any form of “assembly” as required by the claim is created. But this has the consequence that the claim is not longer directed to a “door inner panel assembly” as stated but in effect to a door including such an assembly, and is thus inherently unclear.

The second problem stems from the use of the word “comprises” in feature i). Certainly, one possible interpretation of this is the one proposed by the [patent proprietor], namely that the door inner panel is constituted by the door inner skin alone. The claim itself does not however contain anything which would make this restricted reading of “comprises” obligatory. Indeed, constructions can be readily envisaged in which a door inner panel assembly comprises a pre-assembled door inner skin and mounting plate which supports further ancillary equipment. Thus this feature is also unclear, particularly as its intended function of distinguishing the claimed subject-matter from the most relevant state of the art is not achieved.

[2.5] Given that the amendment in question was freely chosen by the [patent proprietor] in the course of these opposition proceedings, the Board is of the opinion that is should be clear in its own right, without any undue recourse to the description to interpret it.

However, even if that view of the legal situation were incorrect, the Board notes that there is nothing in the description that could assist in overcoming the lacks of clarity identified above. The reason for this lies in the fact that the feature added to the amended claim is based solely on a substantially coterminous passage of the particular description, the rest of which is concerned with a specific embodiment no longer intended to be covered by the claims. […]

The patent is revoked.

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The file wrapper can be found here.

T 282/09 – The Hidden One

This appeal was filed against the decision of the Opposition Division to revoke the opposed patent for lack of inventive step.

Claim 1 of the patent as granted read:

1. A structured matrix in the form of a structure foil or a press plate for the manufacture of a decorative thermosetting laminate (21), which laminate (21) includes a decor paper in the form of a web or a sheet (11 and 1 respectively), provided with a decor pattern having pattern sections with different directions, characterised in that the matrix (12 and 2 respectively), is provided with a number of surface-structure sections being structurally independent from each other and coinciding at least mainly but preferably completely with corresponding decor sections of the decor paper (1, 11) of the decorative thermosetting laminate (21), which décor paper (1, 11) has positioning means (3) such as colour dots, holes, code lines, indentations or the like, that said positioning means (3) are placed in a predetermined relation to the direction variations of the décor pattern and that these positioning means (3) in the décor paper (1, 11) are used for properly positioning the matrix toward the décor paper (1, 11) thereby achieving above desired match between the décor pattern and the surface structure.

Claim 1 of the main request before the Board read:

1. A use of a structured matrix in the form of a structure foil or a press plate in the manufacture of a decorative thermosetting laminate (21), which laminate (21) includes a decor paper in the form of a web or a sheet (11 and 1 respectively), provided with a decor pattern having pattern sections with different directions, wherein the matrix (12 and 2 respectively), is provided with a number of surface-structure sections being structurally independent from each other and coinciding at least mainly but preferably completely with corresponding decor sections of the decor paper (1, 11) of the decorative thermosetting laminate (21), which décor paper (1, 11) has positioning means (3) such as colour dots, holes, code lines, indentations or the like, said positioning means (3) are placed in a predetermined relation to the direction variations of the décor pattern and that these positioning means (3) in the décor paper (1, 11) are used for properly positioning the matrix toward the décor paper (1, 11) thereby achieving above desired match between the décor pattern and the surface structure and thereby getting a decor surface with a surface structure, the different directions of which corresponds with the directions of the different pattern sections of the decor pattern.

The Board finds this request not to comply with A 123:

[2.1] The patent as granted comprised a sole independent product claim directed to a structured matrix in the form of a structure foil or press plate, together with dependent claims directed to preferred embodiments of the structured matrix of claim 1.

The claims of the main request as amended now comprise only use claims, which have replaced the product claims. These use claims, namely independent claim 1 and dependent claims 2 to 5, are directed to the “use of a structured matrix ... in the manufacture of a decorative thermosetting laminate”.

[2.2] In the present case, product claim 1 of the patent in suit as granted, i.e. before amendment to the use claims, confers absolute protection to the claimed matrix, that is to say, for the particular matrix and for all its uses.

[2.3] However, according to EPO practice (see, for instance decision T 401/95 [4.3.2]) a claim directed to “the use of a physical entity to produce a product” is to be considered as a process claim comprising physical steps for producing the product using the physical entity, with the consequence that this type of use claim is a process claim within the meaning of A 64(2). Pursuant to that article of the EPC, the product, insofar as it is directly obtained by that process, is also protected. Hence, the product, when obtained by that process for producing the product, is within the scope of protection conferred by that type of use claim (see decision G 2/88 [5.1]).

In the present case, use claim 1 comprises the physical step of manufacturing a decorative thermosetting laminate. Thus, use claim 1 confers protection on the claimed use of the particular structured matrix and, additionally, pursuant to A 64(2), to the decorative thermosetting laminate obtained by the manufacturing process.

[2.4] When comparing the protection conferred by the granted claims […] with the protection conferred by the amended claims […], it is clear that the protection conferred after amendment extends beyond that conferred before, contrary to the requirements of A 123(3), because the decorative thermosetting laminate obtained using the structured matrix was not protected before the amendment of the claims, but is now protected as a result of the amendment.

[2.5] Consequently, the change of category from the product claim as granted to the use claim as amended, in the present case, extends the protection conferred. The subject-matter of claim 1 of the main request thus offends against A 123(3) and the main request is not allowable.

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The file wrapper can be found here.

T 646/07 – A Sense Of Purpose

Both the patent proprietor and the opponent filed an appeal after the Opposition Division (OD) had maintained the opposed patent based on the fifth auxiliary request.

Claim 22 of the patent as granted read:

22. An apparatus for packaging a substrate, said apparatus comprising:

a substrate having a first surface (110) and a second surface (120), said first surface comprising a probe array;

a body having a mounting surface with a fluid cavity, said second surface attached to said cavity; and

a cover attached to said mounting surface for sealing said cavity;

wherein said cavity comprises an inlet port and an outlet port, said inlet and outlet ports permitting fluids to circulate into and through said cavity. (my emphasis)

In what follows the Board deals with the novelty of this claim.

[3] The OD found that the devices depicted in Figure 8a of document D1, Figure 11 of document D2 and Figure 3 of document D4 comprised all the individual elements of the apparatus defined in claim 22 as granted, and that, consequently, the subject-matter of this claim lacked novelty.

[4] The board does not share the view of the OD. While it is true that each of the structural elements of the apparatus specified in claim 22 (i.e. a substrate, a body and a cover) is present in the devices described in documents D1, D2 and D4, the board notes that, in its reasoning for the finding of lack of novelty in respect of the subject-matter of claim 22, the OD failed to take into account the feature “for packaging a substrate” characterising the claimed apparatus. In the board’s view, this feature introduces a limitation concerning the purpose of the claimed apparatus which distinguishes it from the devices known in the art at the relevant date.

[5] According to the jurisprudence of the Boards of Appeal (see T 523/89 as well as further decisions cited in “Case Law of the Boards of Appeal of the EPO”, chapter I.C.5.3.3), a statement of purpose made in a claim in respect of a product is to be interpreted as meaning that the claimed product is suitable for the stated purpose. Thus, a product known in the art at the relevant date having all the structural features specified in the claim at issue and being suitable for the same purpose as the claimed product, is considered to destroy novelty.

[6] Applying the principles established by the Boards of Appeal to the present case, the feature “for packaging a substrate” in respect of the apparatus of claim 22 must be construed as meaning “suitable for packaging a substrate”.

While neither appellant disagreed with this interpretation, two issues were subject of dispute between the parties:

(a) what the expression “for packaging” means, and

(b) whether or not the devices depicted in documents D1, D2 and D4 can be regarded as suitable for packaging a substrate.

Meaning of the expression “for packaging”

[7] Since the feature “for packaging a substrate” is not expressly defined in the patent specification - a circumstance that [the patent proprietor] did not deny -, it was argued by [the opponent] that, when assessing novelty of the claimed apparatus, the expression “for packaging” should be given its broadest meaning. This is, in fact, the approach consistently taken by the Boards of Appeal, though with the reservation that the chosen meaning not only must make sense from the technical point of view in the context of the claimed invention, but also must not be in contradiction with the description and the drawings.

[8] Generally, the verb “to package” has the following meanings:

(i) to make or put into a package;

(ii) to design and manufacture a package for a product or series of related products;

(iii) to group or combine (a series of related parts) into a single unit;

(iv) to combine the various elements of (a tour, entertainment, etc.) for sale as a unit.

[package. Dictionary.com. Dictionary.com Unabridged (v 1.1). Random House, Inc. http://dictionary.reference.com/browse/package (accessed: July 30, 2009)]

In the same reference dictionary, the noun “package” is similarly defined as “a finished product contained in a unit that is suitable for immediate installation and operation, as a power or heating unit”.

[9] Among the meanings of the verb “to package” quoted above, the board regards the meaning under (iii) (“to group or combine (a series of related parts) into a single unit”) as the broadest meaning which also makes technical sense in the context of the present invention.

Accordingly, the feature “for packaging a substrate” in claim 22 is interpreted as meaning that the claimed apparatus is suitable for combining a substrate with a body and a cover to form a unit, this unit being suitable for immediate installation and operation. This interpretation is in line with the statements in the description and the drawings of the patent in suit […].

[10] In spite of the fact that the wording of claim 22 appears, at first sight, unclear due to the use of the term “apparatus”, having regard to the patent specification as a whole the board is persuaded that, what is actually claimed in claim 22 is a self-contained unit, i.e. a “cartridge-like” unit containing the substrate, as maintained by [the patent proprietor].

Suitability of the devices in documents D1, D2 and D4 for packaging a substrate

[11] A further question to be decided with respect to the issue of novelty vis-à-vis documents D1, D2 and D4 is whether or not the devices depicted in these documents are apparatuses suitable for packaging a substrate within the meaning of claim 22, i.e. self-contained, “cartridge-like” units comprising a body and a substrate.

[12] The board is not persuaded that this is the case. There is no clear indication in any of the documents cited by [the opponent] that the body and the substrate may form a “cartridge-like” unit. Rather, the figures on which [the opponent] relies seem to show a flow cell to which a substrate has been attached temporarily.

[13] This is particularly apparent from the passage on page 50 of document D2 in which the apparatus depicted in Figure 11 of the same document is described. It is stated in this passage that

“[T]the present invention provides a new use for an apparatus comprising a reaction chamber and a scanning apparatus which can scan a substrate material exposed to the chamber.

Figure 11 illustrates a system and a schematized reaction chamber to which is attached a silicon or glass substrate” [104] ([…] emphasis added by the board). In the board's view, the substrate is not described in this passage as an integral part of the apparatus, but rather as a separate item which needs to be attached to the reaction chamber [106] for operation.

[14] Similarly, in the reactor system [100] illustrated in Figure 8A of document D1, which includes a body [102] with a cavity [104], in order for the desired polymers to be synthesized on a prepared substrate [112], the substrate has to be mounted above the cavity of the reactor system [100] […].

Similar statements are found [in] document D4.

Device disclosed in D4. 402 refers to a flow cell, 406 to a substrate.

[15] In view of the above, the board concludes that none of documents D1, D2 and D4 describes an apparatus for packaging a substrate as defined in claim 22. Thus, novelty of the claimed apparatus vis-à-vis these documents is acknowledged.

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T 1044/08 – Together We Fall

In this case the opponent filed an appeal against the decision of the Opposition Division (OD) to reject the opposition.

The opposition had been based on the grounds of lack of novelty, lack of inventive step as well as insufficiency of disclosure. The notice of opposition explained that independent claim 1 and all dependent claims 2 to 22 were lacking inventive step … and that dependent claim 15 (depending on claim 1 only) also lacked novelty.

Claim 15 read:

The coating composition of claim 1 further containing high-boiling organic liquid and said high-boiling organic liquid is an oxohydroxy liquid selected from the group consisting of tri- and tetraethylene glycol, di- and tripropylene glycol, the monomethyl, dimethyl, and ethyl ethers of these glycols, liquid polypropylene glycols, diacetone alcohol, the low molecular weight ethers of diethylene glycol and mixtures of the foregoing.

As claim 1 had not been attacked on the ground of novelty, the OD concluded that claim 1 was novel.

In its notice of appeal, the opponent contested this formal approach and pointed out that the novelty attack against claim 15 encompassed claim 1.

The patent proprietor argued that this was a new ground as far as claim 1 was concerned and that it refused its consent to treat this ground.

The Board does not share this view:

[2.1] The [opponent] argued that the ground for opposition under A 100(a) in combination with A 54 had been substantiated as required in R 55(c) EPC 1973, now R 76(2)(c), within the time limit prescribed in then applicable A 99(1) EPC 1973. In support of this position the [opponent] referred to page 16 of the notice of appeal filed on 29 September 2005. The [opponent] submitted further that the novelty objection to claim 1 raised in the statement setting out the grounds of appeal was based on facts and arguments which had been set out in the cited passage of the notice of opposition.

The [patent proprietor] maintained that the ground for opposition under A 100(a) in combination with A 54 should be disregarded since the opponent, in his notice of appeal, had merely objected to dependent claim 15 lacking novelty. Since novelty of an independent claim had not been in dispute during opposition proceedings, that ground for opposition had not formed part of the legal framework of those proceedings. The objection under A 100(a) in combination with A 54 against claim 1 had to be considered a fresh ground for opposition. As the patentee, he did not agree to its introduction at the appeal stage.

[2.2] Hence, it has to be examined whether or not the objection of lack of novelty against claim 1 was substantiated in the statement setting out the grounds of opposition which, therefore, did not require the consent of the patentee to examine it in the appeal proceedings.

As to the required substantiation of the ground(s) of opposition, the function of R 55(c) EPC 1973 (now R 76(2)(c)) is, inter alia, to establish the legal and factual framework within which the substantive examination of the opposition is in principle to be conducted, thereby giving the patentee a fair chance to consider his position at an early stage of the proceedings (see G 9/91).

Therefore, according to established case law, an objection raised in opposition must be substantiated in the notice of opposition in such a way that the facts and arguments are sufficient for the EPO and the patent proprietor to understand the case against the patent without further investigation (T 2/89 [3]). In decision T 222/85 [4], the board held that the requirement in R 55(c) was only satisfied if the contents of the notice of opposition were sufficient for the opponent’s case to be properly understood on an objective basis, from the point of view of a reasonably skilled man in the art to which the opposed patent related.

[2.3] Regarding the extent to which the European patent is opposed, the [opponent] on page 1 of the notice of opposition as well as on page 2 of Form 2300, both filed on 29 September 2005, requested revocation the patent in its entirety. The grounds for opposition were indicated on page 1 of the notice of opposition as well as on page 2 of Form 2300 as being A 100(a) in combination with A 54 (lack of novelty) and A 56 (lack of inventive step), as well as A 100(b).

[2.4] The issue of novelty was explicitly addressed on page 16 in the context of dependent claim 15. In this passage it is stated that example 1 of document D5 had disclosed all the features of claim 1 of the patent in suit with the exception of the presence of a low-boiling organic liquid. The [opponent] further argued that, since silanes undergo hydrolysis, low-boiling organic liquids like methanol and ethanol are formed that remain in the composition. Thus, due to hydrolysis of 3-glycidyloxypropyltrimethoxysilane (GLYMO) mentioned in example 1 of document D5, methanol and GLYMO were both present in the composition. As a consequence, the coating composition according to example 1 of document D5 contained more than 1 weight percent of a low-boiling organic liquid as required.

[2.5] As the [opponent] appropriately pointed out, the novelty objection to claim 1 raised in the statement setting out the grounds of appeal was based on the facts and arguments set out on page 16 of the notice of opposition summarised in the previous paragraph. Although the presentation of the objection under A 100(a) in combination with A 54 in the context of dependent claim 15 was not straightforward, the skilled reader, giving full consideration to the explicit reference to example 1 of document D5 and the arguments regarding hydrolysis of silanes, was able to recognise and understand the gist of the attack on the patent under said ground of opposition which included the subject-matter of claim 1. Inferring from page 16 of the notice of opposition that the opponent had acknowledged novelty of claim 1 and merely objected to dependent claim 15 is not an objective assessment of the [opponent’s] submissions. Therefore, the board is of the opinion that, in so far as the ground for opposition under A 100(a) in combination with A 54 is concerned, the opponent’s submissions were sufficient for the OD and the patent proprietor to understand the [opponent’s] case without further investigation.

[2.6] It follows that in the present case the ground for opposition under A 100(a) in combination with A 54 was substantiated as required by R 55(c) EPC 1973 (now R 76(2)(c)) and did not constitute a fresh ground for opposition. Therefore, its consideration by the board of appeal did not require the [patent proprietor’s] approval (see decision G 10/91).

The Board finally found claim 1 to be novel but to lack inventive step. The patent was revoked.

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T 494/07 – A 64 Billiards

This decision is in no way spectacular but it deals with a rather unexpected use of A 64 and contains some other noteworthy statements.

The applicant filed an appeal after the Examining Division (ED) had refused its application.

Claims 1 and 20 to 22 read as follows:

1. A method of classifying an item of currency (2) using a currency tester (50), the method comprising sensing variable characteristics of a currency item (2) and deriving a data vector (X) using values of the sensed characteristics, characterised by transforming the data vector so that the variables represented by at least first and second sets of components (Y1, Y2) of the transformed vector are substantially independent, so that the mahalanobis distance of X is substantially equivalent to the sum of the mahalanobis distances of the components (YI, Y2), and calculating a mahalanobis distance in at least two parts using said first and second sets of components.

20. A method of programming a currency tester (50) comprising storing data for executing a method as claimed in any preceding claim in a currency tester.

21. A method as claimed in claim 20 comprising deriving an acceptance threshold for a currency item using a Hotelling test.

22. A currency tester comprising means for executing a method as claimed in any one of claims 1 to 19.

The ED gave the following reasons for the refusal:

The applicant argued that claims 20 and 21 related to a method of programming a currency tester rather than to a program for computers and were therefore not excluded from patentability. Claim 22 referred to method claims 1 to 19 in a “short format” which was regarded to be clear in the decision T 410/96 of the boards of appeal. Furthermore, the language regarding the claim dependencies in claim 22 was conventional and clear.

Refund of the appeal fee was requested because the decision T 410/96 was not followed even though the relevant facts were the same, which amounted to a substantial procedural violation.

Unsurprisingly, the Board smashes the A 52 argument, but it also has something to say on the claim drafting and the alleged procedural violation.

NB: All legal provisions refer to the EPC 1973.

Patentable inventions (A 52)

[2] According to A 52(1), European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application. Patent protection is thus available for technical inventions of all kinds. The term “invention” in A 52(1) is therefore to be construed as “subject-matter having technical character” (see Case Law of the Boards of Appeal of the EPO, 6th edition, section I.A.1.1).

Claim 20 relates to a method of programming a currency tester. The claimed method therefore involves technical means, namely a currency tester, and is therefore regarded to have technical character (see the decision T 258/03 [4]). In particular, the claimed method involves the step of storing data in a currency tester, with the effect that the data are in fact stored in the currency tester once the step has been carried out. This is to be contrasted to a sequence of computer-executable instructions, i.e. a computer program, which merely have the potential of achieving an effect when loaded into and executed by a computer. Thus, the claim category of the claimed method is distinguished from that of a computer program.

The question whether A 64(2) should be taken into consideration when assessing whether the claimed subject-matter is an invention in the sense of A 52(1) does not appear relevant as the result of performing the method of claim 20 is not a computer program but a programmed currency tester, which is a technical device.

Claim 21 is dependent on claim 20 and as such includes all features of claim 20, so that the comments above also apply to that claim. The method defined in claim 21 is therefore also considered as an invention within the meaning of A 52(1).

Therefore the board considers the method defined in claims 20 and 21 as an invention within the meaning of A 52(1).

Clarity (A 84)

[3] The features of the independent apparatus claim 22 are defined by reference to method claims 1-19 (see T 410/96 [7 to 11]). It might be argued that claim 22 allows different interpretations, namely on the one hand that a single means carries out all steps and on the other hand that respective means are provided. This is however also the case for a claim directed to an apparatus and including as features explicit “means for” carrying out each of the specified steps, as such a formulation does not exclude the possibility that it is in fact the same means which carry out several or all steps. The above-mentioned possibility of different interpretations is therefore regarded to be a sign of adequate scope of protection rather than indicating a lack of clarity.

The manner in which the reference to claims 1-19 is formulated is also regarded to be adequate as shorthand for 19 separate references to claims 1-19, respectively.

Therefore the board considers claim 22 to be clear.

Remittal to the department of first instance (A 111(1))

[4] The board notes that the novelty and inventive step of the subject-matter of claims 20 and 22 depend on the novelty and inventive step of the subject-matter of claims 1-19. The ED has indicated in the appealed decision as obiter dictum that claims 1-19 seemed to fulfil the requirements of the EPC. However, the board has doubts regarding inventive step of the subject-matter of claim 1 in view of document D1 (EP 0 924 658 A2), specifically paragraph [0057].

In order to preserve the right of the appellant to argue before two instances, the board considers it therefore appropriate under these circumstances to remit the case to the department of first instance for further prosecution, as requested by the appellant.

Reimbursement of the appeal fee (R 67)

[5] A 111(2) states that the department whose decision was appealed is bound by the ratio decidendi of the Board of Appeal, if the Board of Appeal remits the case for further prosecution to that department. However, the strict legal obligation to follow the ratio decidendi of a decision of a board is limited to the same application and the same instance whose decision has been contested in the appeal, but does not extend to other applications (or even to other instances in the same application). This is so even if the subject-matter of the two applications is highly similar (see J 27/94 [3]). At most, it can only be regarded as an error of judgement if two apparently similar case constellations are decided differently. Not following T 410/96 does therefore not constitute a substantial procedural violation within the meaning of R 67 and reimbursement of the appeal fee is not justified.

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T 1644/08 – Hindsight Anticipation

Although there is only one A 54, there are indeed several concepts of novelty, depending on the technical field that is considered. The present decision shows that biotech has its particularities.

The present appeal was filed by the opponent after the Opposition Division had rejected its opposition.

Independent claims 1 and 10 of the main request before the Board read:

1. A DNA construct comprising a DNA sequence encoding an enzyme exhibiting endoglucanase activity, which DNA sequence comprises

a) the DNA sequence shown in SEQ ID No. 8, or the DNA sequence obtainable from the plasmid in Saccharomyces cerevisiae DSM 10081, or

b) an analogue of the DNA sequence shown in SEQ ID No. 8 or the DNA sequence obtainable from the plasmid in Saccharomyces cerevisiae DSM 10081, which

i) has at least 90% identity with the coding region of the DNA sequence shown in SEQ ID No. 8 or the DNA sequence obtainable from the plasmid in Saccharomyces cerevisiae DSM 10081, or

ii) encodes a polypeptide which has at least 90% identity with the polypeptide encoded by a DNA sequence comprising the DNA sequence shown in SEQ ID No. 8 or the DNA sequence obtainable from the plasmid in Saccharomyces cerevisiae DSM 10081.

10. An enzyme exhibiting endoglucanase activity, which enzyme is

a) encoded by a DNA construct according to any of claims 1-4, or

b) at least 90% identical to the amino acid sequence shown in SEQ ID No. 9.

Having found this request to be admissible and to comply with A 123 and A 84, the Board deals with the novelty objections raised by the opponent:

[10] Document D1 discloses the cDNA sequences encoding the (~ 43 kD) endoglucanases from Humicola insolens DSM 1800 and from Fusarium oxysporum DSM 2672 as well as the amino acid sequences of both enzymes […]. Document D1 defines a homologue of these enzymes as

“… a polypeptide encoded by DNA which hybridizes to the same probe as the DNA coding for the endoglucanase enzyme with this amino acid sequence (of the appended Sequence Listing) under certain specified conditions …” […].

In Example 2, it is stated that for screening a cDNA library from Humicola insolens and for cloning a cDNA encoding the endoglucanase “(t)he oligonucleotide probes were made on the basis of amino acid sequences of tryptic fragments of the purified ~ 43 kD endoglucanase” and several probes are disclosed in Table 1 of document D1 […]. Homologous endoglucanases derived from other microorganisms producing cellulolytic enzymes are also contemplated and a list of possible microorganisms is explicitly given in document D1 […].

[11] It is not contested that the specific sequences of the endoglucanases disclosed in document D1 do not fall within the scope of the claims of the main request and that the homologues referred to in that document are disclosed only in a generic form without providing any particular examples thereof. Moreover, there is no mention of Thielavia, let alone of Thielavia terrestris NRRL 8126, as a possible source for cloning these homologous endoglucanases in the list of microorganisms disclosed in document D1.

[12] Nevertheless, the [opponent] argues that, in view of the high (~70%) degree of identity between the enzymes of document D1 and the endoglucanase from Thielavia terrestris NRRL 8126, their amino acid sequences share long stretches of identity […] and probes based on these identity regions will hybridize with a DNA sequence encoding the endoglucanase from Thielavia terrestris NRRL 8126 and with DNA sequences encoding these endoglucanases of document D1. Therefore, the former enzyme falls within the definition of homologues given in document D1 and, in line with decision T 1120/00, these homologues anticipate the endoglucanase of the patent-in-suit […].

[13] The board does not share this view. The presence of stretches of identity between the amino acid sequences of the endoglucanases - and the DNA sequences encoding them - disclosed in document D1 and in the patent-in-suit is not contested. However, the determination of these stretches and the selection of specific oligonucleotide probes within these regions, i.e. the common probes, require hindsight based on the knowledge of the patent-in-suit, namely the amino acid and nucleotide sequences disclosed therein. This is all the more so since, to arrive at subject-matter falling within the scope of the claims - starting from the disclosure of document D1, common probes have to be used in the screening of a cDNA library from Thielavia, and more particularly from the strain used in the patent-in-suit - Thielavia terrestris NRRL 8126, none of them being mentioned in document D1. Thus, the board considers the [opponent’s] arguments, which might be of importance for assessing inventive step, lack of relevance for the assessment of the novelty of the subject-matter claimed in the main request.

[14] Whereas the subject-matter of the main request is directed to the specific amino acid and DNA sequences derived from Thielavia terrestris NRRL 8126 and to an intermediate generalization, namely a limited group of related sequences having at least 90% identity to these specific sequences, the homologues referred to in document D1 represent a broad generalization of the specific sequences disclosed in that document since both the (shared) probe and the hybridization conditions are only broadly defined […]. This situation is completely different from that underlying decision T 1120/00, wherein the claims then under consideration and the disclosure of a prior art document contemplated comparable levels of generalization, in particular, a broad generalization defined in similar terms (“substantially homologous”).

In the board's view, an essential message that this decision seeks to convey is that the same standard must be applied to the disclosure of a patent or a patent application and to that of the prior art (cf. T 1120/00 [15]). In the present case, the intermediate generalization (limited group of related sequences) represents a fair and reasonable extension of the specific sequences disclosed in the patent-in-suit which cannot be compared to the broad generalization made in document D1. This limited group of related sequences is not seen as being clearly, directly and unambiguously anticipated by the broad generalization of document D1.

[15] The main request is thus considered to fulfil the requirements of A 54.

The main request also complied with the requirements of A 56; the patent was maintained on this basis.

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Another decision on novelty in the biotech realm can be found here.

T 1421/05 – No, But Yes

This decision also has an interesting passage on a point related to the res judicata doctrine.

Claim 1 of the patent as granted (priority date: February 13, 1990) read:

A single cell-edible oil characterized in that docosahexaenoic acid (DHA) makes up at least 15% of the oil by weight, preferably at least 20%, more preferably at least 30% and most preferably at least 35%.

The patent was revoked by the Opposition Division (OD) on October 12, 2000, for lack of novelty over document D4. The patent proprietor appealed (this appeal is referred to in the present decision as “the First Appeal”) and filed several requests.

Claim 1 of the first auxiliary request read:

A single cell-edible oil wherein docosahexaenoic acid (DHA) makes up at least 35% of the oil by weight, said oil being directly obtainable from a unicellular organism by hexane extraction. (my emphasis)

In its decision T 1091/00 (July 2, 2002) the Board rejected the main request but held that the introduction of the word “directly” into claim 1 of the first auxiliary request did not violate A 123 and that the claims were novel. The Board also stated that the rejection of the main request as well as the findings in relation to the first auxiliary request under A 123, A 83 and A 54 were res iudicata. It remitted the case to the OD for further prosecution.

Before the OD, opponent II argued that the claim lacked inventive step and also raised a lack of clarity (A 84) objection.

In its decision of August 4, 2005, the OD found the new main request (identical to the first auxiliary request before the Board in T 1091/00) to be allowable. The OD did not admit the clarity objection because it held that the Board in T 1091/00 had implicitly decided on clarity – otherwise it could not have taken a decision on novelty.

Opponent II filed an appeal. We have seen in the preceding post that the Board found this appeal to be admissible. The Board then deals with the objection under A 84. Is this a case of res judicata or isn’t it?

[9] Claim 1 of the patent as granted read:

“A single cell-edible oil characterized in that docosahexaenoic acid (DHA) makes up at least 5% of the oil by weight, preferably at least 208, more preferably at least 30% and most preferably at least 35%.”

[10] In the First Appeal, the main request of the proprietor, as filed during the oral proceedings (OPs), was for maintenance of the patent in amended form, whereby inter alia the oil was now defined as being “obtainable from a unicellular organism by hexane extraction” and wherein the DHA content was restricted to a value of “at least 35%”. As a first auxiliary request, also filed during the OPs, the word “directly” was introduced into Claim 1 before the term “obtainable”.

[10.1] The decision of the Board in the First Appeal […] records that the opponent contested the admissibility of the newly filed sets of claims under A 123(2), inter alia as regards the introduction of word “directly” into the first auxiliary request. As to novelty, it argued that the term “being obtainable by hexane extraction” was not a restriction on the claimed oil, so that any prior art oil containing more than 35% DHA was novelty-destroying for this claim.

[10.2] As regards the main request, the Board rejected the objections under A 123(2) and A 100(b) but held that the subject matter of Claim 1 was not novel. As regards the first auxiliary request, the Board rejected the argument under A 123(2) relating to the introduction of the word “directly”. As regards novelty, the Board observed that:

“Contrary to the main request, claim 1 is now directed to the product “directly” obtainable from a unicellular organism by hexane extraction. There is now a clear restriction to the claimed oil for the skilled person ... .”

The Board went on to hold that its subject matter was not anticipated by the cited prior art.

[10.3] The Board then had to consider the conflicting requests for remittal, i.e., the proprietor’s request that the case be remitted to the OD for further prosecution and the opponent’s request that the Board should itself examine inventive step of the auxiliary request without remitting the case […]. As to this the Board said:

“The rejection, by the Board, of the present main request and its findings in relation to the present first auxiliary request under Articles 123(2)(3), A 83 and A 54 are res judicata. […] The OD decided that claim 1 was not patentable on the grounds of lack of novelty but left out the essential issue of inventive step (A 52(1), A 56). This issue, however, forms, inter alia, the basis for the requests of the [opponents] that the patent be revoked in its entirety and must therefore be considered as an essential substantive issue in the present case.” […]

[10.4] The Board concluded that it was necessary to remit the case to the OD for further prosecution on the basis of the set of claims of the first auxiliary request. It further noted that opponent I (who had filed written submissions but who had not appeared at the appeal hearing) would “have the opportunity to give its view on the issue of inventive step which remains to be decided by the first instance.” […] On this basis, the Board set aside the decision under appeal and remitted the case to the OD for further prosecution.

[11] There were then extensive exchanges and delays before a further hearing before the OD took place. In the course of these, the [patent proprietor] filed various new requests, although always retaining the feature of “directly obtainable” in Claim 1 of the main request.

In a communication from the OD dated 5 June 2003 sent in accordance with A 101(2) EPC 1973 and R 58(1)-(3) EPC 1973, the OD recorded that its task was to decide on the issue of inventive step of the claims according to the first auxiliary request accepted by the Board of Appeal as a basis for remittal of the case and, as appropriate, to decide on the allowability of any amendments to this request as subsequently filed by the [patent proprietor].

On 24 November 2003, [opponent II] replied at length, pointing out that it was only the issue of inventive step which had to be considered by the OD, and making detailed comments on this issue, and raising objections to the further amendments which had now been made.

Then, in its letter dated 27 June 2005 [opponent II] raised for the first time the argument that the introduction of the term “directly obtainable” gave raise to a clarity objection under A 84, which it argued remained open for discussion. The argument was that it was clear from the description that an intermediate step was conducted between culture of the cells and hexane extraction and that therefore the skilled man would not know what “directly obtainable” in the claim meant.

[12] In its decision dated 5 September 2005, the OD concluded that the clarity of the claim had been considered by the Board in the First Appeal and that the issue should be regarded as having been implicitly dealt with. The OD took the view that the Board could not have taken a decision on the issue of novelty without considering the clarity of the claims […]. It added that the Board had issued an unequivocal interpretation of the claim which was binding on the Division […] and that in an any event if the Board had wished to entertain further discussion on the clarity of the wording it would have said so. The OD concluded that the clarity objection under A 84 was not open for discussion.

[13] In the present appeal, the [patent proprietor] argues that the issue of clarity is res judicata. For the reasons which follow, the Board does follow this approach although for other reasons it nevertheless accepts that [opponent II] is not entitled to raise this objection.

[13.1] A 111(2) provides that:

“If the Board of Appeal remits the case for further prosecution to the department whose decision was appealed, that department shall be bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same. …”

[13.2] The “ratio” of any decision is “the ground or the reason for making it, in other words, the point in a case which determines the outcome of the judgment.” (see T 934/91). In the First Appeal the Board expressly decided that Claim 1 of the first auxiliary request did not contravene A 123(2) and was novel over the cited prior art, but did not expressly decide that the amendments made to the granted claims did not give rise to a breach of A 84. 

The present Board has reservations about the OD’s statement that the Board in the First Appeal could not have taken a decision on the issue of novelty without considering the clarity of the claims […] because in principle a claim can be novel although unclear. As to the OD’s statement that the Board had issued an unequivocal interpretation of the claim which was binding on the Division […], the Board’s statement about the meaning of the amended claim was made only in the context of novelty, to the effect that with the introduction of the word “directly” there was now a clear restriction to the claimed oil for the skilled person, and that the wording implied that the amount of 35% of DHA must already be present in the extracted neutral lipid fraction of the unicellular organism […]. 

The Board cannot see this as an interpretation of the claim which rules out the particular clarity argument put forward by [opponent II]. Finally, the OD’s statement that if the Board had wished to entertain further discussion on the clarity of the wording it would have said sol while understandable, is not really in point.

[13.3] However, in the present Board’s view these arguments on res judicata do not take into account a wider, more general point. As is generally well known, it is the practice and indeed the obligation of the Boards of Appeal when amended claims are filed during appeal proceedings to examine the claims ex officio for forma1 compliance with the EPC (see G 9/91 [19]) and at the same time also to give the opponent the opportunity to make its own objections on these grounds. Such objections include both objections under A 123(2) and A 123(3) and under A 84. If and when any such objections are cleared away, the claims are then ready to be examined for novelty and/or inventive step, as the case may be, either directly by the Board or by the OD after remittal of the case.

[13.4] Thus in T 952/99 [1.3], cited by the [patent proprietor], the Board said this of the practice of the Boards in the past:

“In particular, the Boards of appeal allowed amended or auxiliary requests during the appeal procedure provided such requests were bona fide attempts to overcome objections raised and furthermore were clearly allowable, i.e. it was immediately clear that the requirements of A 123(2) and A 123(3), A 84 and preferably A 54 were met (T 840/93, [3.2.1]).”

And in T 301/87 [3.8] the Board said:

“... when amendments are made to a patent during an opposition, A 102(3) requires consideration by either instance as to whether the amendments introduce any contravention of any requirement of the Convention, including A 84 …”

[13.5] This is clearly what took place in the First Appeal. As it happened, no objection was raised by the Board or the opponent […] under A 84. The present Board can only conclude that this was because no one considered that the claims were unclear. The objections under A 123(2) and A 83 then having been cleared away, and the claims having been found to be novel over the cited prior art, the case was ready for a decision on inventive step. This was abundantly clear to everyone, not least [opponent II], who in fact wanted the Board to decide this issue there and then, and who then, after the case had been remitted, made its position clear that inventive step was the only remaining live issue.

[13.6] In T 446/00 the Board identified two types of behaviour as being abuses, namely

(a) not to comply with a procedural direction of the Board requiring a party to take a certain step or steps and

(b) for a party to adopt an unequivocal position on an issue and subsequently to depart from that position without explanation.

The latter type of behaviour was held particularly capable of being an abuse in inter partes proceedings, in which the other party is entitled to rely on that position as part of the case it has to meet. At the same time the Board made it clear that these types of behaviour did not form an exhaustive list of procedural abuses.

T 446/00 was later referred to in T 762/07, as follows:

“[5] [Opponent II] referred to T 446/00 of 3 July 2003 in which a patentee specifically stated, in answer to a challenge from the opponent, that it would not rely on a certain claim and then later re-introduced that claim without explanation. That was held to be an abuse of procedure […] . In the present case there was no such specific retraction, but the effect of three years silence broken only at the very last possible opportunity must be viewed as having much the same effect. In T 1449/03 (sic) [2.8-9], a patentee’s departure for the first time at OPs from a position previously and persistently held was not allowed inter alia because the opponent might have been lulled into a feeling of false security.

[6] In all the circumstances, the Board finds that the manner in which [the patent proprietor] 1 reverted to the claims as granted was an abuse of procedure which the OD should not have allowed.”

[13.7] A 114(2) gives the EPO the right to disregard “facts or evidence” which are not submitted in due time by the party concerned. The A 84 point raised by [opponent II] was not a new fact or new evidence, but rather a new argument based on the existing material and the law. However, in T 951/91 [5.15] the Board said:

“The discretionary power given to the departments of the EPO pursuant to A 114(2) serves to ensure that proceedings can be concluded swiftly in the interests of the parties, the general public and the EPO, and to forestall tactical abuse. Parties must take into account the possibility that late-filed material will be disregarded and do their best to submit the facts, evidence and arguments relevant to their case as early and completely as possible. If a party fails to do so without adequate excuse, and admitting the evidence would lead to an excessive delay in the proceedings, the Boards of Appeal are fully justified in refusing to admit it in exercise of the discretion provided by A 114(2).”

[13.8] In T 201/92 [3.8] the Board referred to the distinction between facts and evidence on the one hand, and arguments on the other:

“The submission of facts and evidence is different from the mere submission of arguments (see also: T 92/92). They need not be restricted insofar as they do not essentially change the procedural situation. However, in written proceedings the filing or exchange of submissions has also to be brought to an end, in particular when OPs are going to follow.”

[13.9] Further, the Departments of First Instance and Boards of Appeal have an inherent power to control proceedings before them with a view to their economical and fair disposal. As the Board said in T 201/92 [3.5]:

“… it follows clearly from the provisions of the EPC as well as from the nature and the purpose of appeal proceedings (see inter alia A 110(2), A 111, A ll4(l)(2), A ll6(l), A 117, A 122, A 125) that it is the competent Board who has the duty to direct and control the proceedings before it. Due to the fact that every legal and judicial procedure has to come to an end within due time, the principle of procedural economy is inherent in any procedural law, as it appears in the EPC inter alia in A 114(2) and also clearly follows from the Travaux Préparatoires of the EPC (see: T 951/91). That means that any party, and not least the attacking ones, has to observe a fair degree of procedural vigilance.”

[13.10] Each case will turn on its own facts, and while [opponent II] cannot be accused of precisely the above types of behaviour in the present case, the Board finds the above statements helpful.

In the present case the Board in the First Appeal had remitted the case for further prosecution in the clear and shared belief that the only remaining issue in the case was inventive step. [Opponent II] not only shared this belief at the time but subsequently affirmed it. It then later changed its position and thereby sought to change the “procedural situation” (see the citation from T 201/92, above). It did not give an explanation for doing so although it is a reasonable inference that it was because, with a change of representative, the new point had only just been thought of.

[13.11] In these circumstances the Board considers that it would not have been in accordance with normal procedural efficiency and principles of fairness to have allowed [opponent II] to re-open questions relating to the formal allowability of the claim and attempt to raise a new issue that it had had the opportunity to raise and which it should have raised at an earlier stage of the proceedings, and in doing so to resile from its previous position. To allow it to do so would not have been fair on the [patent proprietor] and could have led to further delay and increased cost. This was particularly so given that the Board in the First Appeal had examined the amended claim for formal compliance with the EPC and it had not occurred to the Board that there might be a problem with A 84. The OD would therefore have been entitled not to allow this argument to be raised. It does not matter whether one terms such procedural manoeuvring an abuse of process or not, the result is the same.

[13.12] For the same reason the Board did not allow this issue to be raised in the appeal proceedings.

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