T 418/07 – Nonchalance

The opponent filed an appeal after the Opposition Division had rejected the opposition.

The decision is interesting because the patent proprietor had some rather unusual requests related to the oral proceedings (OPs) to be held before the Board:

Multiple representatives

[2] On 4 April 2011, shortly before the OPs on 4 May 2011, the [patent proprietor] appointed a second firm of representatives as joint representatives in addition to the firm already acting and asked the board to send copies of all correspondence to both firms […]. After the board gave a negative answer to that request in its communication of 12 April 2011, the [patent proprietor] repeated the request in a subsequent letter of 14 April 2011 […].

[3] While it is open to a party to appoint as many representatives as it may wish, the board is not aware of any requirement on it or on other parties to send correspondence to more than one representative of one party. If a party wants to retain multiple representatives, it must make its own arrangements for copying correspondence to them all. Parties cannot expect the board to provide copying services for their convenience.

Provision of translation in OPs

[4] The [patent proprietor] announced in its letter of 4 April 2011 that it would use German at the OPs and requested the board to provide translation from German into English for the benefit of the [opponent] and of one of its own employees who would attend the OPs and who does not speak German […].

[5] It is a right of any party to use any one of the three official languages in EPO proceedings, but the right to translation from either of the two other languages is circumscribed by R 4. It is clear from R 4(1) and (5) that a party who gives at least one month’s prior notice is free to use an official language other than the language of the proceedings and that interpretation must then be provided by the EPO.

[6] However, such interpretation is quite manifestly only for the benefit of other parties not using the same language who would otherwise be at a disadvantage. In the present case that might have included the [opponent] had it not decided not to attend the OPs but then it would clearly have been he, and not the [patent proprietor], who was responsible for requesting free translation at least one month before the date of the OPs (see R 4(1)). In the board’s view it is equally clear that a party which elects to use a language which is not understood by one of its own representatives or employees cannot for that reason request a free translation. The board cannot provide translation merely to suit the convenience of a party.

Requests for decisions in advance of OPs

[7] The [patent proprietor] made several attempts to obtain a decision or partial decision from the board before the date of the OPs. In one of its letters of 4 April 2011 it requested the board to indicate whether or not the OPs were necessary and also requested the board to inform it whether or not it intended to admit the documents whose admissibility the [patent proprietor] had challenged […]. This would have required the board to decide those admissibility issues before the OPs. In its letter of 21 April 2011, it limited its request for OPs so as only to be effective if its main request was not granted. Again this would have required the board to decide the main request before the OPs.

[8] The [patent proprietor’s] objective seems to have been the quite understandable one of avoiding or reducing the costs of attending the OPs. However, even if only one party makes or maintains a request for OPs, the board cannot make any decision before the OPs. The purpose of OPs being to hear the parties before making a decision, any decision or part-decision in advance of the OPs could deny a party the right to be heard, assist one party to the prejudice of another, and compromise the board’s duty of impartiality (see A 113(1) and decision R 11/08 [14]). If avoidable costs are a concern to a party, its remedy is to request not a premature decision but an apportionment of costs.

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T 960/08 – A Certain Uncertainty

On 14 May 2008, VDO Automotive AG (“VDO”) filed an appeal against the decision of the Opposition Division (OD) to reject an opposition filed by Siemens AG (“Siemens”). The appeal was filed in the name of VDO and, as an auxiliary request, in the name of Siemens.

With a letter received on 26 June 2008, i.e. after expiry of the period for filing the notice of appeal, the representative filed a declaration by Siemens and another declaration made on behalf of VDO, both dated 22 April 2008, stating that the opponent status had been transferred, as well as an extract from the commercial register of the Amtsgericht Regensburg.

The patent proprietor questioned VDO’s entitlement to appeal and the admissibility of the auxiliary request indicating Siemens as an appellant.

The Board’s analysis of the situation contains both a useful overview over the applicable case law and an interesting statement on auxiliary requests.

[1] At the end of the oral proceedings (OPs), the representative of the appellant requested that the board first decide on the auxiliary request.

This request requires a reversal of the order in which the requests were filed.

The admissibility of the appeal can be examined only on the basis of the legal facts as they stand at the time the period for filing the notice of appeal expired. The order of requests concerning the person of the appellant is also a legal fact. Therefore, the requests have to be considered in the order they were filed when the time limit for filing the notice of appeal expired.

The request is therefore refused.

Entitlement to appeal of VDO

[2.1] VDO is not entitled to appeal under A 107, first sentence.

According to A 107, first sentence, only a party to proceedings adversely affected by a decision may appeal. In deciding which party is affected by a decision, the legal situation at the time the impugned decision was issued has to be considered.

The party adversely affected by the decision under appeal is Siemens, since its opposition was rejected by the impugned decision.

Siemens filed the opposition and remained the party to the opposition proceedings until the end of the procedure, i.e. it was the party to the opposition proceedings at the time the decision under appeal was issued. There was no indication in the notice of opposition that the opposition had been filed in the interests of the business assets “Siemens VDO Automotive” or any other special business assets.

These facts are evident from the file and have been confirmed by the appellant.

It follows that Siemens was formally the party to the opposition proceedings.

VDO was never a party to the proceedings before the department of first instance in the present case. Therefore, the conditions laid down in A 107, first sentence, concerning entitlement to appeal are not fulfilled.

[2.2] VDO is not entitled to appeal due to the transfer to it of the business assets “Siemens VDO Automotive”.

Where opposition proceedings are pending before the EPO, the opponent’s status may be transferred to a third party by universal succession or as part of the opponent’s business assets, together with the assets in the interests of which the opposition was filed (see G 4/88 and Case Law of the Boards of Appeal, 6th Edition 2010, VII.C.5.1.2).

However, there is a clear distinction between a substantive transfer of opponent status with the business assets and its procedural validity in proceedings before the EPO (cf. among others, T 19/97).

The boards of appeal have consistently held that formal requirements have to be fulfilled for the opponent status to be considered transferred. This finding is based on an application, by analogy, of the general procedural principle laid down in R 22(3) (cf. Case Law of the Boards of Appeal, 6th Edition 2010, VII.C.5.1.2).

It follows from this procedural principle that the procedural validity of a transfer of opponent status is dependent on the submission of a duly substantiated request and on production of documents providing evidence of legal succession within the proceedings (cf. among others, T 6/05, T 19/97). A mere declaration by the transferee that he has acquired the party status is not sufficient (cf. T 670/95). A transfer can only be acknowledged from the date when adequate evidence to prove the transfer was filed, i.e. ex nunc (cf., among others, T 956/03, T 1137/97, T 1421/05). There is no retroactive effect of the submission of evidence. Until evidence of the transfer has been provided, the original party to the proceedings continues to have the relevant rights and obligations (cf. e.g. T 870/92, T 19/97, T 478/99, T 413/02, T 6/05). This is especially justified in cases where the opponent status is transferred together with the assignment of business assets, because the original party continues to exist and may continue the opposition proceedings (cf. T 6/05 [1.6.4]). In particular, if the transfer takes place before the period for filing the notice of appeal expires, then the entitlement of the transferee to replace the opponent has to be established by filing the necessary evidence before the period for filing the notice of appeal expires (T 956/03). The present board does not see any reason to depart from this jurisprudence.

In the present case, it was even never explicitly requested during the proceedings that the transfer of the party status as opponent be acknowledged. In fact, there was no substantiated submission on this issue at any time in the proceedings. On the contrary, the appellant submitted that Siemens continued to be party to the proceedings.

The declarations annexed to the letter of 26 June 2008, i.e. after expiration of the period for filing the appeal, that the opponent status had been transferred are not a request that the transfer be acknowledged in the proceedings and cannot be considered an implicit request either because this is in contrast to the procedural behaviour of the appellant and its submissions.

Moreover, the appellant admitted that it could not be proved that the declarations as well as the extract from the commercial register of the Amtsgericht Regensburg were filed at the EPO before the expiry of the period for filing the notice of appeal.

As it was not requested that the transfer of the party status be acknowledged and as the declarations and extract from the commercial register of the Amtsgericht Regensburg filed as evidence were submitted after expiry of the period for filing the notice of appeal although the alleged transfer had taken place earlier, it is unnecessary to examine whether the evidence would be convincing.

Since the required conditions are not fulfilled, the procedural validity of the transfer of the opponent status cannot be acknowledged in the present case.

It follows from the above that VDO is not entitled to file the appeal under A 107.

Admissibility of the auxiliary request indicating that the appeal is filed in the name of Siemens

[3.1] In principle, a conditional appeal is not admissible.

However, in decision G 2/04 the Enlarged Board of Appeal (EBA) held that an appeal filed by one representative containing an auxiliary request concerning the person of the appellant is admissible under the following three conditions:

i. there are no doubts whether a review of the contested decision shall take place;

ii. the professional representative is entitled to act in the name of both persons;

iii. there is a legal uncertainty about the party status.

According to G 2/04, a legal uncertainty about party status exists when the uncertainty is caused by a legal situation which, from an objective point of view, may be considered unclear (cf. G 2/04 [3.2.4(c)]), thus corresponding to situations where the party status has to be decided by the competent body of the EPO on the basis of the file as it stands and depends only on the judgment of this body (cf. G 2/04 [3.2.4(c)]) and the party in question cannot be held responsible for the legal uncertainty as to which one of the entities may seriously be considered to be the correct party (cf. G 2/04 [3.2.5(b)]).

An uncertainty dependent on an uncertain event outside the proceedings, or caused by the procedural conduct of the party, does not justify filing an appeal in the name of a person indicated alternatively as an auxiliary request (see G 2/04 [3.2.4(c)]).

[3.2] In the present case, there are no doubts that it was intended that a review of the contested decision shall take place and that the representative who filed the appeal was entitled to represent both parties.

However, the legal situation was clear from an objective point of view. In fact, although the alleged transfer of the party status took place before the expiry of the period for filing the notice of appeal, no request for transfer of the party status had been filed before expiry of the period for filing the notice of appeal or at any time later. Therefore, according to the established jurisprudence of the boards of appeal (see above point [2.2]), the transfer has no procedural validity before the EPO, irrespective of whether or not there was an agreement between the parties on this point.

The alleged legal uncertainty about the party status resides in the fact that the appellant and the representative were uncertain about the content of the contract concerning the transfer and about the conditions under which a transfer is procedurally valid. This is a state of mind of the representative and thus an event outside the proceedings which does not justify the filing of an auxiliary request in the name of the person indicated alternatively.

(a) The “Einbringungsvertrag” is a contract between the two parties in whose name the appeal was filed. The parties are legal persons. The fact that individuals working for them in different departments did not know the content of the contract, or had different opinions about its content, or evaluated its legal effects differently, or had different opinions on what pertained to the transferred business assets, is an event outside the proceedings.

The argument of the appellant that it is the duty of the EPO to decide who is the right party to proceedings in this case cannot be accepted as it is an improper attempt to shift responsibilities insofar as it seems to imply that the EPO, instead of the parties, should decide on the content of the contract.

(b) As far as the uncertainty as to the necessary means of proof and the time of their filing is concerned, the jurisprudence clearly establishes that, if the appeal is filed by the transferee, the transfer has to be requested and proved within the time period for filing the notice of appeal and that, in the case of a transfer of business assets, the request that the transfer be acknowledged has no retroactive effects.

The necessity of requesting and proving the transfer before expiry of the period for filing the notice of appeal was therefore clearly recognisable.

It is true that in decision G 2/04 [3.2.3(c)], the EBA cites as an example of legal uncertainty the situation where a request for transfer of the opposition has been submitted but the transfer has not yet been registered and it is doubtful whether or not the evidence submitted by the requester for establishing the transfer actually satisfies the EPO that a transfer has duly taken place.

In the present case, however, no request to register a transfer has been filed, so that this example is irrelevant.

(c) As far as decisions G 4/88 and G 2/04 are concerned, it is clear that both decisions are complementary and applicable to the present case insofar as G 4/88 establishes the principle that the opposition pending before the EPO may be transferred to a third party as part of the opponent’s business assets together with the assets in the interest of which the opposition was filed and as G 2/04, contrary to the view developed by the appellant, does not contradict this finding and does also not permit a free transfer of the status as opponent.

The factual situations underlying these two decisions are very clear and very different from each other. In the situation underlying G 4/88 it was for legal reasons not from the outset possible to attribute the procedural status of opponent to the business assets in the interests of which the opposition was filed, whereas G 2/04 is concerned with a situation in which the holding company did not want to attribute the procedural status of opponent to the entity in whose interest the opposition was filed and which already existed at that time. In G 2/04 it was decided that there is no reason to extend the application of the rationale of G 4/88 to the case where a subsidiary company was sold in whose interest the opposition had been filed by the parent company.

The legal situation that follows from these decisions is clear: only if the business assets in the interests of which the opposition was filed are sold to another company is a transfer possible. In that case, if all further conditions established by the jurisprudence are fulfilled, then the transfer also has procedural validity before the EPO.

In the present case, it was submitted that a transfer of business assets had taken place and that the transferee did not exist at the time the opposition was filed. There was accordingly no reason to think that G 4/88 was not applicable. Moreover, the situation underlying G 2/04, namely two legal entities existing at the time the opposition was filed, was not given.

There could also not be any uncertainty on the way the two decisions should be applied.

The uncertainty was a personal uncertainty on the part of the representative, and this is an event outside the proceedings.

Thus, the conditions established by decision G 2/04 for the admissibility of an auxiliary request concerning the identity of the appellant are not fulfilled.

Since the appellant is not entitled to appeal and its auxiliary request is not admissible, the appeal is inadmissible under A 107 and R 101(1).

[4] The appellant requested that the notice of appeal be corrected under R 139.

A correction under R 139 is only possible if there is an error in a document.

For the notice of appeal, R 101(2) and R 99(1)(a) are to be applied as lex specialis (cf. e.g. T 340/92, T 1/97, T 97/98).

The principles for correction of a notice of appeal under these Rules were set out in T 97/98. Even though that decision was taken under the EPC 1973, the same principles apply under the EPC now in force, since the text of R 99(1)(a) and R 101(2) is identical to that of R 64(a) and R 65(2) EPC 1973.

In case T 97/98 [1.3], the board held that:

“What is required (for a correction) under R 64(a) and R 65(2) is that there was indeed a deficiency, i.e. that the indication was wrong, so that its correction does not reflect a later change of mind as to whom the appellant should be, but on the contrary only expresses what was intended when filing the appeal. It must be shown that it was the true intention to file the appeal in the name of the person, who is, according to the request, to be substituted.”

The board added that, for the purposes of R 64(a) and R 65(2) EPC 1973, it must be possible on the expiry of the time limit for appeal to determine whether or not the appeal was filed by a person entitled to appeal in accordance with A 107 EPC. For this, it is sufficient if:

“it is possible to derive from the information in the appeal with a sufficient degree of probability, where necessary with the help of other information on file, e.g. as they appear in the impugned decision, by whom the appeal should be considered to have been filed ...”. (point [1.3] of the reasons).

The board also indicated that the identity of the true appellant should be derivable within the appeal period by a person not knowing all the details later presented to the board (point [1.6] of the reasons).

The present board agrees with these principles and applies them to the present case.

The appellant submitted the request for correction as an auxiliary request.

This implies that it considered the original declaration to be the main request.

This implies in turn that this declaration was not an error and that the change is just a change of mind. A correction is therefore not possible, because the notice of appeal did not contain a deficiency under R 99(1)(a).

The notice of appeal in case T 457/08 was filed as evidence that the true intention was to file the appeal for Siemens, as the main request, and for VDO as an auxiliary request, because that was the order of the requests in that case. However, that notice of appeal cannot prove the true intention in the present case. Furthermore, the notice of appeal in another appeal is not information on file, i.e. as it appears in the impugned decision, as required in T 97/98.

The respondent submitted decision T 428/08, in which the same order of requests as in the present case was chosen and maintained.

Therefore, it cannot be assumed that the appellant usually files its appeals in the reverse order and only in the present case was the order erroneously changed. The appellant itself submitted that it has tried different combinations in order to provoke a referral to the EBA.

The board therefore holds that the original declaration was not an error and cannot be corrected under R 101(2). […]

The appeal filed in the name of VDO or subsidiarily in the name of Siemens is rejected as inadmissible.

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T 600/08 – Cured

Opponent 3 was the only party to file an appeal against the decision of the Opposition Division to maintain patent EP 1 022 787 in amended form.

This patent was based on a divisional application from application EP 0 400 146 filed by Siemens AG. The divisional application had been filed on December 10, 1999, in the name of Osram Opto Semiconductors GmbH & Co. OHG (hereinafter OOS).

On May 12, 2000, the applicant’s representative requested a correction (pursuant to R 88 EPC 1973) of the name of the applicant. He pointed out that at the time of the filing of the divisional application, the parent application (referred to as “root application” (Stammanmeldung) in the decision) had already been transferred from Siemens to OOS but the transfer had not yet become effective before the EPO. The fact that the divisional had been filed in the name of OOS was due to an error.

On June 2, 2000, the RS allowed the correction.

The opponent argued that the RS should not have granted the request to correct the designation of the applicant for the divisional application. Therefore, the application based on which which the patent under consideration had been granted never was a valid divisional application. As a consequence, its effective date was the date on which the divisional application was filed, and the publication of the parent application was novelty-destroying prior art for the “divisional” application.

The patent proprietor pointed out that the effective date of a patent based on a divisional application could only be the date of filing of the parent application. Consequently, the parent application could not destroy the novelty of the opposed patent.

According to the patent proprietor, the – incorrect – objection that the RS should not have allowed the correction could not be invoked in the appeal proceedings.

In what follows, the Board deals with the novelty objection:

*** Translation of the German original ***

[2.1] The impugned patent is based on divisional application n° 99 124 677. The divisional application was filed on December 10, 1999. The OOS company was named as applicant. Application n° 89 109 835, which had been filed on May 31, 1989, by Siemens AG was cited as previous application (root application).

When the divisional application was filed, Siemens AG was still named as applicant for the root application in the European Patent Register (EPR).

The transfer of the root application from Siemens AG to OOS was only entered into the EPR on January 31, 2000, after a corresponding request had been filed on the same day.

In a communication dated May 4, 2000, the RS of the EPO informed the applicant for the divisional application that at the time of filing of the divisional application the applicant for the divisional application was not the same as the applicant for the root application and that, unless the error was corrected within one month after the receipt of the communication, the applicant would be informed by means of a communication pursuant to R 69(1) EPC that the above mentioned application could not be treated as a divisional application.

Then Siemens AG, in a written submission dated May 12, 2000, requested that the applicant of the divisional application be corrected – under R 88 EPC 1973 – to Siemens AG.

[Siemens AG] justified this request by pointing out that, from a substantive point of view, at the time of filing of the divisional application the root application had already been transferred from Siemens AG to OOS but that this transfer had not yet become effective before the EPO. This had been overlooked when the divisional application was filed. Therefore, the OOS company had been erroneously named as applicant for the divisional application.

In a communication dated June 2, 2000, the RS informed [Siemens AG] that the correction of the applicant had been allowed.

[2.2] The appellant objected to this [course of action]. A correction pursuant to R 88 1973 should not have been made. As a consequence, there was no valid divisional application and the effective date of the impugned patent was the date of receipt of the underlying application. Consequently, the content of the root application was novelty-destroying for the application that had been filed as a divisional application. The whole matter should be treated in analogy to a case where a priority was not validly claimed.

[2.3] The Board cannot endorse this reasoning. After all, it can be left unanswered whether [the RS] was right at that time in allowing the correction - although there are good arguments for concluding that it was - or not. But even if the correction should not have been made at that time there is no support in the EPC for the consequences the appellant derives from it.

As the Enlarged Board of appeal has explained in decision G 1/05 [11.1],

“[u]nder the EPC the filing date of the root application is the only filing date which can be attributed to a divisional application, by way of the legal fiction contained in Article 76(1), second sentence, second half sentence, EPC […]. There is no room under the EPC for a divisional application to have as filing date the date of its actual filing with the EPO.”

As a consequence, as the [patent proprietor] has rightly pointed out, there are only two alternatives for a European patent application filed as a divisional application. Either it is not treated as a divisional application, in which case there are no grant proceedings at all, or it is treated as a divisional application, in which case it can only have the date of filing of the root application. Therefore, it necessarily follows from the fact that the application on which the impugend patent was based was filed as a divisional application that it is entitled to the date of filing of the root application. As a consequence, the root application cannot constitute a novelty-destroying prior art for the impugned patent.

In this respect the case under consideration differs fundamentally from the examination of the validity of a priority claim. The right of priority has the effect that the date of priority counts as the date of filing of the European patent application for the purposes of A 54, paragraphs 2 and 3, and A 60, paragraph 2. If the claimed priority proves invalid, this effect does not occur and the filing date is the actual date of filing.

Moreover, [the EPC] does not provide for an examination of the lawfulness of the correction of the designation of the applicant carried out by the RS in opposition proceedings. A 100 gives an exhaustive list of the grounds for opposition. Futher grounds cannot be invoked against the patent as granted during opposition proceedings.

In principle the grant of the patent cures possible formal errors and deficiencies that have occurred during the grant proceedings, such as a possibly unlawful allowance of a request for a correction pursuant to R 88 EPC 1973. Such deficiencies cannot lead to the revocation of the patent as granted in opposition proceedings, because they do not constitute a legal ground for opposition (cf. Schulte, “Patentgesetz mit EPÜ”, 8th edition, §39 PatG or A 76 EPC, respectively, marginal numbers 78, 79).

Incidentally, the fact that the impugned patent has been amended does not alter [the situation] because in this case also the cut-off effect (Zäsurwirkung) of the act of grant cures possible formal errors and deficiencies that have occurred during the grant proceedings.

This finding is not surprising. It is also to be accepted in other cases - such as the case of a patent which was granted after a request for re-establishment had been allowed pursuant to A 122, although it should not have been allowed - that possible formal errors and deficiencies that have occurred during the examining proceedings are cured by the act of grant and are not examined any more in opposition proceedings (cf. J 22/86).

[2.4] As a consequence, the content of the root application cannot be novelty-destroying for the impugned patent.

The Board then found the claims on file to involve an inventive step and finally dismissed the appeal.

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NB: The Board also provided a headnote:

A patent application filed as a divisional application can only have the filing date of the root application.

The EPC does not provide for the possibility of examining the lawfulness of a correction of the designation of the applicant carried out by the Receiving Section during opposition proceedings (see point [2.4] of the Reasons).

T 1033/07 – Should I Stay Or Should I Go?

The applicant filed an appeal against the decision of the Examining Division (ED) refusing his application on the ground of lack of novelty over documents D1 and D2.

The applicant requested that the decision under appeal be set aside and that the appeal fee be reimbursed. He justified the request for reimbursement as follows:

The present application (called “divisional 2”) was a divisional application of European patent application No. 02 014 905 (called “divisional 1”), which was in turn a divisional application of European patent application No. 99 125 620. In the case of “divisional 1”, the ED had issued a communication dated 30 January 2006, indicating that the examination proceedings were adjourned until the Enlarged Board of Appeal (EBA) had given its decision in case G 1/05 concerning the validity of a divisional application. At the material time, there existed a possibility that “divisional 1” had to be considered as never filed and, thus, non-existing. In this case, “divisional 2”, i.e. the present application, could also be considered as never filed and non-existing. The existence of the present application depended also on the decision in case G 1/06. Therefore, the validity of the present application was uncertain. By refusing the present application instead of adjourning the examining proceedings until the EBA had taken its decision, the ED had made a substantial procedural violation. Any discussion of the present application in appeal proceedings, so the appellant argued, was premature, since it could not be established with certainty at this stage, whether or not the present application was validly filed.

Following the appeal, the ED rectified its decision to refuse the application pursuant to A 109(1). The ED did not allow, however, the appellant’s request for reimbursement of the appeal fee, this request being forwarded to the board of appeal for a decision.

The Board did not allow the request:

[3] According to R 103(1)(a), the appeal fee is reimbursed in the event of interlocutory revision, if such reimbursement is equitable by reason of a substantial procedural violation.

[3.1] It has to be investigated, therefore, whether a substantial procedural violation occurred in the present case during the examination proceedings.

[3.2] The ED refused the present application under A 97(2) on grounds of lack of novelty of the process according to claims 1 to 3 in respect of the disclosure of D1. The ED held that, although the wording of claim 1 of the present application was different from the wording used in D1, there existed no technical difference between the process set out in claim 1 of the present application and the process disclosed in D1. In the decision under appeal, the significance of the disclosure of D1 was discussed in detail […].

[3.3] The board is satisfied that the reasons which led to the refusal of the application were both understandable and adequate, so that the decision was sufficiently reasoned in accordance with R 111(2). In this respect, there is no evidence that the decision under appeal is tainted with any flaws.

[3.4] In the appellant’s view, the ED committed a substantial procedural violation by refusing the application, instead of adjourning the examining proceedings until such time when the EBA had given in consolidated proceedings G 1/05, G 1/06 and G 3/06 its “decision concerning the validity of the present divisional application as for the parent application” […].

[3.5] The board notes that the alleged procedural violation is completely unrelated to the ground of lack of novelty of the process of claims 1 to 3, which was decisive for the refusal of the application. Consequently the outcome of case G 1/05 was not “of the highest importance” for the present application, as the appellant erroneously believed […]. For this reason, the board cannot subscribe to the notion, that the ED committed objectively a substantial procedural violation by not adjourning the examination of the application until such time, when the EBA gave its decision in consolidated cases G 1/05 and G 1/06 and G 3/07 (sic).

[4] Regarding the conditions for staying proceedings before the EPO first-instance departments (here: ED) in connection with consolidated cases G 1/05, G 1/06 and G 3/06, the board refers to the Notice from the EPO dated 1 September 2006 (see OJ 2006, p. 538 - 539).

[4.1] According to said notice, examination proceedings were stayed until issuance of the decision of the EBA only where the two following conditions are met:

(i) the stay of proceedings has explicitly been requested by the party to the proceedings, i.e. the applicant; and

(ii) the outcome of examination proceedings depends in the opinion of the ED entirely on the decision of the EBA.

Furthermore, the notice contained the following statement: “All cases affected by decision T 39/03 will henceforth be stayed only where the two abovementioned conditions are fulfilled.” (see Notice from the EPO, OJ 2006, p. 539, paragraphs 3 to 6; emphasis added by the board).

[4.2] The board notes that in the present case, the applicant (now appellant) did not make an explicit request for staying the examination proceedings. The ED on its part did not consider, that the outcome of the examination proceedings depended entirely on the decision in consolidated cases G 1/05, G 1/06 and G 3/06. Therefore, neither the first nor the second condition for staying the examination proceedings set out in the Notice from the EPO dated 1 September 2006 was met.

[4.3] Under these circumstances, there existed no legal basis for the adjournment of the examination proceedings in the case of the present application. Since the course of action adopted by the ED was in full conformity with the Notice from the EPO dated 1 September 2006, there can be no question of a procedural violation.

[5] In the absence of a substantial procedural violation, no reimbursement of the appeal fee is possible under R 103(1)(a).

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T 9/10 – Hidden Danger

Something attorneys amending claims – especially in the chemical field – have to be aware of is the risk of adding features that apparently limit the claim but which de facto enlarge the scope of the claim. We have already seen such cases (e.g. here and here), here is yet another one.

The opponents filed an appeal against the decision of the Opposition Division to maintain the patent in amended form.

Claim 1 as granted read:

A skin cleansing composition comprising

(A) 3 to 80 wt.% of an oil component,
(B) 1 to 45 wt.% of a hydrophilic nonionic surfactant,
(C) 1 to 45 wt.% of a lipophilic amphiphile,
(D) 3 to 80 wt.% of a water-soluble solvent and
(E) 3 to 80 wt.% of water,
and having an isotropic liquid phase exhibiting a bicontinuous structure.

Claim 1 of the main request before the Board read:

A skin cleansing composition comprising

(A) 3 to 80 wt.% of an oil component,

(B) 1 to 45 wt.% of a hydrophilic nonionic surfactant, having an HLB value of more than 8 and having a hydrophobic group with 8 or more carbon atoms,

(C) 1 to 45 wt.% of a lipophilic amphiphile, selected from nonionic surfactants having an HLB value of 8 or less, fatty alcohols having 8 to 25 carbon atoms, fatty acids having 8 to 25 carbon atoms and monoalkylphosphoric acids having 8 to 25 carbon atoms,

(D) 3 to 80 wt.% of a water soluble solvent and

(E) 3 to 80 wt.% of water,

and having an isotropic liquid phase exhibiting a bicontinuous structure.

The Board found this request to violate A 123(3):

[1.1.1] Claim 1 as granted defines a skin cleansing composition comprising inter alia “1 to 45 wt.% of a hydrophilic nonionic surfactant”, referred to as component (B).

[1.1.2] The use of the term “comprising” in connection with a numerical range defining the amount of a component implicitly means, that the protection conferred by the claim does not extend to compositions containing that component in amounts outside the defined range (see the head note of T 2017/07).

[1.1.3] In the present case this means that the protection conferred by claim 1 as granted, as far as component (B) is concerned, is restricted to skin cleansing compositions containing not less than 1 wt.% and not more than 45 wt.% of any kind of hydrophilic nonionic surfactant.

[1.1.4] The same considerations apply for components (A) and (C) to (E) in claim 1 as granted.

[1.1.5] In Claim 1 of the main request, the following definition is given for component (B): “1 to 45 wt.% of a hydrophilic nonionic surfactant, having an HLB value of more than 8 and having a hydrophobic group with 8 or more carbon atoms”.

[1.1.6] Given the amended definition of component (B) in the main request, this feature is to be regarded as restricting component (B) to the specific group of hydrophilic nonionic surfactants with the defined HLB value and number of carbon atoms in the hydrophobic group.

[1.1.7] As however the wording of claim 1 according to the main request is restricted as far as the specifically defined component (B) is concerned, due to the non-exclusive term “comprising” any other hydrophilic nonionic surfactant with HLB values and/or a number of carbon atoms in the hydrophobic group outside the definition given may be present in the skin cleansing composition.

[1.1.8] Consequently, since claim 1 as granted excludes any hydrophilic nonionic surfactant in an amount less than 1 and more than 45 wt.%, whereas claim 1 according to the main request allows the presence in undefined amounts of any hydrophilic nonionic surfactants not having the specific HLB values and/or the number of carbon atoms in the hydrophobic group, the protection conferred by claim 1 according to the main request is extended in comparison with the protection conferred by claim 1 as granted, contrary to the requirement of A 123(3).

[1.1.9] Similar considerations apply to feature (C) of the claimed composition.

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T 1984/07 – The Phone That Never Rang

This appeal was against the decision of the Examining Division to refuse the application under consideration.

The Board summoned to oral proceedings (OPs) and in a communication set out its preliminary opinion concerning clarity, added subject-matter and inventive step.

In response to this communication, the appellant filed two further amended sets of claims forming the basis of a main and auxiliary request respectively to replace all previous requests.

The OPs were held in the absence of the appellant.

In what follows, the Board deals with the appellant’s absence and his right to be heard.

Absence of the appellant at the OPs

[4.1] As announced in advance, the duly summoned appellant did not attend the OPs. In accordance with R 115(2), the proceedings continued without him. As foreseen by Article 15(3) RPBA, the absent appellant was treated as relying only on his written case and the issuance of the decision was not delayed due to his absence at the OPs.

[4.2] In advance of the OPs the appellant requested that he be contacted by telephone should neither of the requests on file be considered to be substantially allowable “such that an allowable set of claims may be prepared before the date of the OPs”.

[4.3] Whilst A 116(1) foresees a fundamental right to OPs if requested by a party to the proceedings, a similar right to an informal telephone consultation does not exist (see T 552/06 [2.2]).

In the present case, the Board summoned to OPs at the appellant’s request and was prepared to discuss the case with the appellant during those OPs. A communication was issued in preparation of the OPs in which various objections of the Board were presented. The whole purpose of convening an OPs is to allow an exchange of opinions between the appellant and the entire Board and to ensure that the appellant has had ample opportunity to present its case before a decision is taken at the conclusion of those proceedings. If a party chooses not to attend the OPs, it gives up the opportunity to present its case is this manner. The Board notes that no request to re-schedule the OPs was made.

Under R 100(2) the Board shall invite the parties “as often as necessary” to file observations. In view of the fact that OPs had been appointed, a further opportunity to present observations or requests need not be given outside this framework, the OPs providing the necessary platform for this exchange of opinions.

[4.4] The Board does not rule out that there may be circumstances in which a telephone call may be appropriate: for example, if only minor objections remain which can be easily attended to by straightforward amendments. However, in the present case, the objections are of such nature that any further amendments are likely to entail more than just a simple modification to the wording of the claims or a straightforward adaptation of the description. In view of the late stage of the proceedings and the declared intention of the appellant not to attend the OPs, it is questionable whether any further requests involving possibly extensive amendments to the claims would have been admitted into the proceedings anyway.

Right to be heard

[5.1] The claims forming the basis of both requests were filed in response to the Board’s communication. A further communication was not issued before the OPs. Since the appellant did not attend these OPs, the Board had to consider whether taking a decision on these claims would infringe the requirements of A 113(1).

[5.2] Article 15(3) RPBA reads:

“The Board shall not be obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the OPs of any party duly summoned who may then be treated as relying only on its written case”.

This text is the same as the text of Article 11(3) RPBA of 1 May 2003, the explanatory notes to which state the following (CA/133/02 dated 12 November 2002):

“This provision does not contradict the principle of the right to be heard pursuant to A 113(1) since that Article only affords the opportunity to be heard and, by absenting itself from the OPs, a party gives up that opportunity”.

[5.3] The Board follows the line taken in decision T 1704/06 [7.6], in which it was held that:

“[...] in the situation where an appellant submits new claims after OPs have been arranged but does not attend these proceedings, a board [...] can also refuse the new claims for substantive reasons [...] even if the claims have not been discussed before and were filed in good time before the OPs. This will in particular be the case if an examination of these substantive requirements is to be expected in the light of the prevailing legal and factual situation.”

In the present case, the appellant had to expect that a discussion of both formal and substantive issues relating to the newly filed sets of claims would take place during the OPs. Specifically, the appellant had to expect that the Board would at least consider the question of whether the new requests could be admitted into the proceedings and, if so, whether the amendments satisfy the requirements of A 123(2).

[5.4] It follows that in the present case, the Board was indeed in a position in the OPs to decide on the requests on file without violating the appellant’s right to be heard. By filing amended claims before the OPs and then not attending those OPs, the appellant must expect a decision based on objections which may be raised against those claims in his absence (Article 15(3), (6) RPBA). […]

The appeal is dismissed.

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T 98/09 – Singled Out

Claim 1 of the opposed patent read :

Compositions for controlling pests of plants, which compositions comprise compounds of the general formula (I)

in which

X represents =CH– or =N–,

E represents NO2 or CN,

R represents heteroatylmethyl having up to 6 ring atoms and N, O, S as heteroatoms, which are optionally substituted by alkyl having 1 to 4 carbon atoms, alkoxy having 1 to 4 carbon atoms, alkylthio having 1 to 4 carbon atoms, haloalkyl having 1 to 4 carbon atoms and 1 to 5 halogen atoms, where the halogen atoms are identical or different, hydroxyl; halogen; cyano; nitro; amino; monoalkyl- and dialkylamino having 1 to 4 carbon atoms per alkyl group,

A represents hydrogen or C1-4-alkyl,

Z represents C1-4-alkyl or -NH(C1-4-alkyl) or

A and Z together with the atoms to which they are attached form a saturated or unsaturated 5- to 7-membered heterocyclic ring which may contain a further one or two identical or different heteroatoms and/or hetero groups, possible heteroatoms being oxygen or nitrogen and possible hetero groups being N-alkyl, where the alkyl of the N-alkyl group contains 1 to 4 carbon atoms,

in a mixture with the azole derivative of the formula

in a synergistically effective ratio.

The Opposition Division revoked the patent.

Before the Board, the patent proprietor filed a new main request, claim 1 of which read:

Use of compositions comprising a compound selected from group I

in a mixture with an azole derivative of the formula

for controlling pests of plants, wherein the relative weights of the active compounds in the mixture are such that there is a synergism with respect to the pests of plants.

Claim 1 of the first auxiliary request was further limited to “controlling wheat pests and fungal attacks on vegetables, wine and fruit”.

In claim 1 of the second auxiliary request the list of compounds of group I in claim 1 of the main request was limited to imidacloprid:

The Board found these claims to violate A 123(2):

*** Translation of the German original ***

Main request

[2.1] Originally filed claim 1 is directed at compositions comprising compounds of general formula (I) in mixture with fungicidal active compounds. In claim 1 of the main request, the component of formula (I) has been limited so as to be chosen from a list of six specific compounds. The second compound has been limited to a single compound, cyproconazol (II-4) […].

In the claims as originally filed there was no reference to specific compounds. Therefore, it has to be checked whether the combination of components according to claim 1 of the main request can be derived directly and unambiguously from the application as originally filed.

According to the first paragraph of the description, the invention concerns compositions for controlling pests of plants comprising a combination of certain agonists or antagonists of the nicotinergic acetylcholine receptors of insects with fungicides, as well as their use for controlling pests of plants.

From page 2, line 16, to page 5, line 3, the insecticidal active compound is defined by general formulas (I), (Ia) and (Ib). This is followed by a list of single compounds (page 5, lines 5 to 10), i.e. the six insecticides that have now been incorporated into claim 1 […].

The compositions to be used as fungicides are mentioned in a lists of 47 individual compounds or groups of compounds (pages 6 to 23). Cyproconazol appears among them, on page 6, line 12. This is the only place in the original application where cyproconazol is mentioned.

Therefore, in the present case, in order to arrive at the subject-matter of claim 1, all alternatives with the exception of one have been deleted from the list of possible fungicides. So cyproconazol has been picked from a voluminous list of alternatives without there being any indication in the original application that this compound is preferred in any way. Simultaneously, the compounds of group (I) have been limited to a list of six specific insecticides. As the definition of the fungicide component is not a list any more, [the subject-matter] has been fixed to six individual combinations of active compounds (i.e. cyproconazol in mixture with the respective listed insecticides), which had not been disclosed in this individualised manner.

As a consequence, the originally filed description cannot provide any support of claim 1 of the main request.

Contrary to the opinion of the [patent proprietor], even a deletion from a list can correspond to an inadmissible extension, [in particular] if the picking of a single active compound leads to a selection of combinations which are logically (denkgesetzlich) comprised by the original application but which have not been specifically disclosed. According to the established case law of the Boards of appeal such a selection is an inadmisisble extension and, therefore, to be considered to be a violation of A 123(2) (see, e.g. T 727/00 [1.1.4], T 686/99 [4.3]).

Auxiliary request 1

[2.2] The reasons under [2.1] also apply to claim 1 of auxiliary request 1 because this claim contains all the features of the main request that are relevant for the above argumentation […].

Auxiliary request 2

[2.3.1] In claim 1 of auxiliary request 2 the insecticide was further limited to the compound imidacloprid […]. Thus the composition to be used is determined to be a mixture of imidacloprid and cyproconazol.

In addition to the passages of the originally filed description already discussed, the [patent proprietor] has referred to the examples as providing support of this combination of active compounds.

On page 30, lines 20 to 22 of the description, the following is disclosed:

“In the examples that follow, imidacloprid is employed as active compound of the formula (I). The fungicidal active compounds also used are stated in the examples.”

In examples A to F that follow mixtures of imidacloprid with different fungicidal active compounds are used. However, none of these mixtures contains cyproconazol. Therefore, the specific combination of imidacloprid and cyproconazol is not directly and unambiguously disclosed in the examples.

The Board agrees with the [patent proprietor] that in the exemplary embodiments imidacloprid is the only insecticidal active compound. However, this compound was only disclosed in the context of specific fungicidal active compounds. Therefore, only the explicitly mentioned combinations are directly and unambiguously disclosed in the examples. There is no hint in the original application according to which the component imidacloprid is to be picked from the specific context of the examples and to be considered to be preferred in a more general context. Thus the argument of the [patent proprietor] according to which the combination of imidacloprid with all fungicides mentioned in the application has been disclosed in the original application cannot be endorsed.

As already mentioned under point [2.1], the general part of the original description discloses imidacloprid within a list of six equivalent (gleichwertig) members, and cyproconazol as a member of a quite voluminous list. In the present case, therefore, there have been deletions of all but one components in two lists. This leads to a selection of a concrete combination consisting of imidacloprid and cyproconazol, which had not been disclosed originally in this individualised manner.

[2.3.2] The decisions cited by the [patent proprietor] are to be commented as follows:

In decision T 1253/07 [2.3], the limitations of claim 1 of the main request were considered to be admissible because , in view of the examples the skilled person would have directly and unambiguously correlated the subgroup of safeners of formula (III) to the herbicide 3-2. By contrast, the present examples do not provide any support for the combination of imidacloprid and cyproconazol, as already explained under point [2.3.1] above.

In the case underlying decision T 783/09, one paragraph of the application as filed disclosed two DPP-IV-inhibitors “LAF 237” and “DPP728” to be particularly preferred in combination of 22 anti-diabetic compounds. Under the particular circumstances of the case the competent Board has come to the conclusion that this resulted in a direct and unambiguous individualised disclosure of each combination of each single anti-diabetic compounds mentioned and “LAF237” and “DPP728”, respectively (see point [5] of the reasons). This situation is not comparable with the present situation, be it only because in the relevant paragraph of page 5 of the present application as filed, imidacloprid is disclosed in a list of six equivalent members.

Therefore, the Board comes to the conclusion that the case law cited by the [patent proprietor] is not relevant for the present case. […]

The appeal is dismissed.

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T 109/08 – (Dis)Sancta Simplicitas

The patent proprietor filed an appeal against the decision of the Opposition Division (OD) to revoke his patent for lack of novelty. The OD did not admit the late-filed ground for opposition pursuant to A 100(b) into the proceedings since it could not see “any prima facie relevance in the late filed submissions concerning the ground of opposition under A 100(b)”.

The Board did not approve:

Scope of the examination of the appeal

[3.1] The [opponent] took issue with the OD’s conclusion not to admit the late-filed ground of opposition (A 100(b) – lack of sufficiency of disclosure) into the proceedings. It requested that the relevance of this ground be considered by the board and admitted into the appeal proceedings.

[3.2] Under A 107, first sentence, a party can only appeal if it is adversely affected by the decision of the first instance. A party is adversely affected if a decision does not accede to its requests (established jurisprudence; see T 961/00 [1]). In the present case the patent was revoked in accordance with the [opponent’s] request. Therefore, the [opponent] was not in a position to file an appeal with the sole object of securing the admission of a fresh ground of opposition into the proceedings even though its request to admit the new ground of opposition pursuant to A 100(c) had been rejected by the OD. According to A 107, second sentence, the [opponent] is however party to the appeal proceedings as of right. In accordance with the principle of equal and fair treatment of all parties, the [opponent] must be able to challenge, in reply to the admissible appeal by the proprietor, the way the OD exercised its discretion when not admitting the late-filed ground of opposition, so as not to be put at an unfair disadvantage given the [patent proprietor’s] legitimate attempt to reverse the decision revoking the patent. The board has therefore the power and duty to decide whether the OD’s conduct of the proceedings amounted to a violation of A 114(2) or A 113(1).

Fresh ground of opposition - review of exercise of discretionary power

[4.1] If the way in which a department of first instance has exercised its discretion on a procedural matter is challenged in an appeal, it is not the function of a board of appeal to review all the facts and circumstances of the case as if it were in the place of the department of first instance, and to decide whether or not it would have exercised such discretion in the same way. A board of appeal should only overrule the way in which a department of first instance has exercised its discretion if the board concludes that it has applied the wrong principles, or not taken account of the right principles, or has acted in an unreasonable way (G 7/93 [2.6]). The board therefore is in the first place charged with reviewing the OD’s exercise of its discretion under A 114(2). A failure to exercise sound, reasonable and legal discretion does not however need to amount to bad faith, intentional wrong doing, or unsound conduct of the proceedings to justify an appeal board reviewing the exercise of discretionary power by a department of first instance.

[4.2] The OD did not admit lack of sufficiency of disclosure as a late-filed ground for opposition since it considered that it was not prima facie relevant, i.e. would not prejudice the maintenance of the patent, for the reasons given in point I of “Reasons for the decision”.

[4.3] An inspection of the file shows that the opponent raised an objection of lack of sufficiency of disclosure with its letter dated 16 August 2007 as a reaction to the preliminary view expressed by the OD in its communication sent as an annex to the summons to oral proceedings (OPs) under the heading “Novelty”. In particular, the OD stated the following in said communication:

“In principle, the opponent did not demonstrate that the amounts presented in the various documents in wt.% correspond to the amounts presented in the contested patent in vol.%. In order to calculate the amounts in vol.% it seems to be necessary to determine the density of the composite, the polymer matrix and the filler materials”. (emphasis added)

By saying this the OD overlooked the fact that the patent in suit does not contain any definition in relation to the density of the composite (bulk density, apparent density). Moreover, claim 1 as granted does not contain any definition in relation to the chemical nature or physical form of the resin base and does not specify either the chemical nature and constitution of the filler materials. The claim merely contains some definitions in relation to particle sizes (in a non-limitative way by means of the definition of ranges preceded by the term “comprises”) which had also been contested, and the “product-by-process”-like term “ground”, i.e. obtainable by grinding. In fact, the resin base may include, according to the description, commercially available monomers of very different chemical natures. These might, or might not be, polymerized or cured in the dental composite, with the corresponding volume shrinkage (and differences in the density after shrinkage). The filler materials for their part are to be chosen from a broad palette of materials with a broad variety of tamped volumes resulting in different densities of the composite, contrary to the simplistic understanding stated in the OD’s decision […] that “in dentistry similar materials having a similar density are used”.

[4.4] In its response dated 16 August 2007 to the OD’s communication, the opponent justified its failure to file earlier the grounds pursuant to A 100(b) as follows: during examination proceedings the relative contents of the filler in the dental composite introduced in the amended and eventually granted claim 1, expressed as % by volume, had been treated by the applicant and the examining division as if they were amounts. Therefore, on the basis of this understanding of the claimed subject-matter it had initially based its opposition on a lack of novelty since the dental composite claimed contained comparable amounts of filler in terms of bulk as those in the prior-art documents which were expressed as % by weight.

[4.5] The board has investigated the correctness of the opponent’s allegation mentioned in point 4.4 above. As a matter of fact, the definition of the composite in claim 1 as granted as a dental composite comprising a resin base and about 11% by volume to about 80% by volume filler relates to a definition which was introduced during examination proceedings and which derived from the arithmetical addition of two independent ranges for load volumes of the particular filler materials defined in originally filed claims 1 and 7 (between about 10% by volume and about 70% of a ground structural filler, and between about 1% and about 10% by volume of microfiller). This amendment was introduced by the applicant and accepted by the examining division, as if it involved the mere addition of amounts. However, it appertains to the common technical knowledge that when adding load volumes of two filler materials of different particle sizes the filler component with smaller particle size fills the interstices between the bigger particles of the other filler component (as is acknowledged in lines 19-20 on page 14 of the application as filed). Thus, the total volume of filler in the composite taken as the result of the arithmetical addition of the load volumes of the different filler materials contradicts the common technical understanding and the original disclosure.

[4.6] The opponent further stressed in its letter dated 16 August 2007 that there were essential differences between a bulk volume and a tamped volume and that the patent in suit did not contain any reference to a method of measuring the volume of the filler contained in the dental composite expressed in claim 1.

Moreover, the opponent stated in said letter that the specific examples A, B and C in the patent in suit expressed the amounts of filler components in % by weight in the composite, and that the only place where % by volume could be found was in the tables as “load volume %”.

[4.7] It is manifest that Table 3 expresses for the composites of examples A, B and C the “load weight %” for the filler as the total amount (which results from arithmetical addition of the amounts expressed as % by weight of the three different filler materials employed), and further states a “load volume %” for the filler in toto (emphasis added) but does not give any value for any content of the separate filler materials as % by volume of the composite.

[4.8] In view of the analysis made in points [4.2] to [4.7] above it is apparent that the OD exercised its discretion in an unreasonable way, since the OD’s reasoning for considering the ground of opposition pursuant to A 100(b) to be prima facie not relevant disregards all the essential technical aspects mentioned above, which are manifestly relevant for an objective evaluation of the novelty of the subject-matter claimed.

The OD’s approach reduced the relevance of A 100(b) to a mere reproduction of the specific examples. Such an approach is not correct in the present case since there is a gap, created by an apparent lack of explicit technical information in the patent in suit, between the particular reproduction of the individual examples and the extrapolation of this specific teaching when trying to reproduce the generic dental composite defined in claim 1 as granted. It is not immediately evident how this gap can be filled from the content of the description and the general knowledge of the skilled person.

[4.9] Therefore, the arguments put forward by the opponent with its letter of 16 August 2007 justified the late filing of the grounds pursuant to A 100(b) and raised reasonable doubts as to the sufficiency of disclosure of the subject-matter claimed in the granted claims. Therefore, the late-filed ground for opposition should have been admitted into the proceedings.

[4.10] Furthermore, as the OD did not admit the ground of lack of sufficiency of disclosure into the proceedings, it endorsed the conversion (brought by the opponent as a subsidiary argument) of % by wt. values into % by vol. values based on an artificial conversion factor calculated from the relationship between the load weight% and the load volume% for the filler appearing in Table 3 of the patent in suit, and concluded by analogy that there was a lack of novelty vis-à-vis document D5 (EP-A-0 677 286).

[4.11] The [patent proprietor] (patentee) has contested the technical correctness of these calculations in its grounds of appeal.

The [opponent] replied that this argumentation made it clear that the ground of opposition pursuant to A 100(b) should be admitted into the proceedings. Moreover, the opponent submitted further documents and technical information about the density of particular materials used as constituents for the fillers of the prior art.

[4.12] From the analysis made in points 4.3 to 4.9 above it is apparent that the OD did not take into proper consideration all the facts and arguments bearing on the issue of the late-filed ground of opposition. Rather, it based its assessment of the admissibility of the late-filed ground of opposition and consequently also its finding of lack of relevance on manifestly wrong technical assumptions and on an erroneous approach to applying A 100(b). This amounts to an unsound exercise of discretion (A 114(2)) which in the board’s opinion justifies the reversal of the decision in suit.

[5] Having regard to the fact that the full and correct assessment of sufficiency of disclosure of the claimed subject-matter has not yet taken place because the OD declined to admit this ground of opposition, the dispute in relation to novelty of the claimed “invention” has been artificially overburdened in the present appeal by a manifest lack of explicit information in the patent in suit concerning some of the technical features in the claims as granted.

A 111(1)

[6.1] As regards the [opponent’s] request that the case should not be remitted to the department of first instance since the board may exercise any power within the competence of the department which was responsible for the decision appealed, the following has been considered (A 111(1)). As expressed in the board’s communication sent as an annex to the summons to OPs, the issue of substantive examination of the grounds for opposition pursuant to A 100(b) – yet to be undertaken – is not a minor one in the present case. The board is convinced that a hypothetic assessment of the other opposition grounds is devoid of meaning before sorting out that matter.

[6.2] Moreover, the board considers that the present situation, in which the appealed decision is based on manifestly wrong technical assumptions which lead to the revocation of the patent for lack of novelty, justifies that the substantive examination of the grounds for opposition under A 100(b) being dealt with at two instances.

[6.3] Consequently, the board sets aside the decision under appeal and remits the case to the OD for further prosecution and in particular for a substantive examination of the grounds pursuant to A 100(b) (A 111(2)).

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NB: A French summary can be found on Le blog du droit européen des brevets.