T 1937/10 – Just A Question Of Strength

This decision –  on an appeal against the rejection of an opposition as inadmissible – reminds us that one has to distinguish between inadmissibility and unallowability.

[1.1] The notice of opposition is founded on the sole objection of lack of novelty against claim 1 of the contested patent, relying only on an alleged public prior use (D1 to D3) and a prior disclosure of that same device (D1, D3, D4). The inadmissibility of the opposition is based on the ground of insufficient substantiation, in particular with regard to the question of what has been actually disclosed […].

[1.2] The relevant requirements concerning substantiation of the opposition are set out in R 76(2)(c), according to which the notice of opposition shall contain a statement of the extent to which the European patent is opposed and of the grounds on which the opposition is based, as well as an indication of the facts and evidence presented in support of these grounds.

[1.3] It is clear from the EPO Form 2300 dated 28 November 2007 filed by the [opponent] that the opposition was filed against the patent as a whole (extent) and based on the grounds of A 100(a), namely lack of novelty and lack of inventive step (grounds). This is further confirmed by the notice of opposition itself. The first two conditions of R 76(2)(c) are therefore clearly fulfilled.

[1.4] With respect to the last condition (facts and evidence), according to the established case law the notice of opposition must indicate the “when”, “what” and under “what circumstances”, in particular “to whom”, the alleged public prior use was made available (T 522/94 [headnote IV, 10, 12, 20 to 25]; T 328/87 [3.3]).

[1.5] In the present case, the [opponent] cited documents D1 to D5 with its notice of opposition. D5 was merely cited for dependent claims, it is therefore not relevant for this decision. It indicated that a relevant device, as in D1, was made public to the attendees of a public seminar, i.e. to members of the public not bound by secrecy, held in Kemi, Finland on 23-34 March 1995 (circumstances and when). It filed D2 in this respect, constituted of a cover page, a programme page and a one page description of an AQS300 device with a picture and a drawing of this device.

The [opponent] argued in its notice of opposition that D1 discloses all the features of claim 1 except the features of the characterising portion. The latter features are alleged to be comprised in the device shown at the said seminar (what). D2 and D3 were filed as evidence to support this fact.

The same device was the subject of a prior disclosure in the article D4, showing the same picture as in D2. The photos D3 were filed as supporting evidence for this device as well.

In the light of these “what”, “when” and “what circumstances”, the [opponent] concluded that novelty of the subject-matter of claim 1 was not given.

[1.6] As indicated in T 597/07 [2.5] of the reasons, according to the established case law, “it is not required for an opposition to be admissible that the arguments brought in support are conclusive or that the opponent’s statements are true. What is required is that the patentee and the opposition division are put in a position of understanding clearly the nature of the objections and the evidence and arguments in support”.

It is further referred, for instance, to T 1022/99 [2.2] of the reasons, indicating that the facts - what, when, what circumstances of the alleged public prior use - must be indicated within the opposition period, while the evidence can be brought later in the proceedings as long as it is indicated.

http://www.epo.org/law-practice/case-law-appeals/pdf/t991022fu1.pdf

[1.7] Therefore, a distinction must be made between examining admissibility of the opposition and its substantive merit (see Case Law, 7^th edition 2013, chapter IV.D.3.3.3).

This distinction, contrary to the [patent proprietor’s] opinion, was not made in the impugned decision which appears to be focused only on assessing whether the [opponent’s] case of alleged prior use was conclusive and convincing.

[1.8] The [patent proprietor] holds the view that T 597/07 requires that the nature of the evidence is clearly understandable at the time when the opposition is filed and considers this element to be missing in the present case.

It argues that it is not unambiguously established that D2 and D3 are prior art documents. In particular, it is not clear whether page 3 of D2 actually belongs to D2 itself as there is no direct link between said page 3 and the first two pages (cover and programme of the seminar). With respect to D3, the pictures might have been taken on any device at any time and their link to the other documents D1, D2 or D4 merely relies on [opponent’s] allegations.

Even though the pictures look similar, the link between D2 and D4 is also missing and cannot be unambiguously established. Similarly, the link between D1 and D4 is unclear as there is no mention in D1 of the machine AQS300 of D4.

In fact, the notice of opposition merely alleges that D1 to D4 refer to the same device, without giving any evidence, however, how these documents are actually interrelated. The opposition relies on allegations without even indicating how these allegations could be proven.

Consequently, further investigations would be needed for the [patent proprietor] or the opposition division to clarify and understand the nature of evidence. That makes the opposition inadmissible.

[1.9] The Board cannot share the [patent proprietor’s] view for the reasons given during the oral proceedings and recited below.

The decision T 597/07 does not refer to the “nature of evidence” but rather to the evidence as such. The sentence quoted under point [1.6] above is to be understood as that the patentee and the opposition division are put in a position of understanding clearly:

• the nature of the objections and
• the evidence and
• arguments

in support, i.e. meaning that the “nature” only relates to the objections, not to the evidence itself as argued by the [patent proprietor].

Furthermore, D1 (its translation D1a), D2, D3 and D4 (for its introductory part that has been translated and its pictures) are understandable documents, D1 and D4 being indisputable prior art documents as admitted by the [patent proprietor]. What the evidence is alleged to be proving is explained by the [opponent] in the notice of opposition (see also point [1.5] above), in particular with respect to the sole alleged distinguishing feature of the characterising part of claim 1 over D1. This characterising part reads as follows:

“at least some of said upper log-receiving surfaces (16) or of said leading edge regions (18) comprise a plurality of projections projecting therefrom, said projections comprising an outermost contact region for contacting logs being transferred between said spaced locations, said contact regions being configured as a peak”

In the notice of opposition the [opponent] argued that this feature could be seen in the picture contained in D2, which was further alleged to be clarified by the photos of D3, alleged to have been taken on the same device as shown in D2. The same argument was brought forward regarding the identical picture in D4, relating to the allegedly same installation as discussed at the seminar (D2). The relationship between these documents is therefore sufficiently discussed.

When reading the notice of opposition, the nature of the objections (lack of novelty), the evidence (D1 to D4) and the arguments (interrelation between D1-D4) in support, i.e. the case the opponent tries to make, is therefore clearly understandable for the Board.

Whether the device of D1 was actually the same as presented at the seminar (D2) or was actually the same as discussed in D4, i.e. whether the [opponent’s] statements in the notice of opposition are proven or not, does not relate to the admissibility of the opposition but rather to its substantive merit. The same applies to the question whether D2 is the complete document and whether the photos of D3 relate to the device of D2 or D4 as it was alleged.

An opposition can indeed be found admissible on the basis of the statements, documents or copies thereof indicated in/filed with the notice of opposition which, later in the opposition proceedings, may eventually be considered incomplete, insufficient or simply wrong.

This, however, does not put the admissibility of the opposition into question. It only relates to the strength of the case.

Doubting whether documents cited in the notice of opposition are actually what they are alleged to be, as in the present case by the [patent proprietor] and the impugned decision, is an issue of merit of the opponent’s case, not of its admissibility.

[1.10] In view of the above, the Board considers that the notice of opposition meets the requirements of R 76(2)(c). Consequently, the opposition is admissible.

The Board then remitted the case for further prosecution.

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

The file wrapper can be found here.

T 2041/09 – Grain Sizes

Claim 1 on file read :

Fireproof product made of a mix of additives, at least one binder and an admixture (Zusatz), characterised in that the admixture consists in synthetic TiO₂-containing particulate materials having an average grain size d50 from 0.2 to 2000 µm. (my emphasis)

*** Translation of the German original ***

[3.1] In the impugned decision the Examining Division (ED) established that the subject-matter of the then pending claims 1 to 6 was not novel over the disclosure of documents D1 and D2.

[3.1.1] Documents D1 and D2 disclose TiO₂-containing additives consisting of residues of the TiO₂ production, a binder (e.g. a cement) and one or several components selected from inter alia SiO₂ and Al₂O₃ […]. The TiO₂-containing additives are powder mixtures having a grain size of 50 to 5000 µm […]. However, documents D1 and D2 do not disclose any grain size distribution. Particles having a grain size of 50 to 5000 µm do not necessarily have an average grain size for 0.2 to 2000 µm because they could, e.g. consist of particles > 2000 µm only.

[3.1.2] Thus documents D1 and D2 do not disclose TiO₂-containing particulate materials having an average grain size from 0.2 to 2000 µm, so that these documents do not destroy the novelty of the subject-matter of claim 1.

[3.2] In the course of the examining proceedings there were additional objections of lack of novelty of the subject-matter of the then pending claims over documents D3 and D4.

[3.2.1] Document D3 discloses TiO₂-containing additives consisting of inter alia residues of TiO₂-pigment production and Fe₂O₃. The product does have a grain size of 100% <2 mm (i.e. necessarily an average grain size of up to 2000 µm) […], but it does not contain any binder.

[3.2.2] Document D4 discloses a fireproof material containing inter alia Al₂O₃, SiO₂, FeO, TiO₂, and boric acid […]. This document discloses all the components of the fireproof product according to claim 1 of the application under consideration, but it does not disclose any grain size for the products.

[3.2.3] Thus documents D3 and D4 do not disclose all the features of claim 1, so that they do not destroy the novelty of the subject-matter of claim 1.

[3.3] To sum up, the feature according to which the average grain size of the synthetic TiO₂-containing particulate materials is between 0.2 to 2000 µm, as required by claim 1, cannot be directly and unambiguously derived from any of documents D1, D2, and D4, so that these documents do not destroy the novelty of the subject-matter of claim 1. Document D3 does not disclose that the product contains a binder, so that this document does not destroy the novelty of the claimed subject-matter either.

[3.4] The statement of the ED according to which there is no technical effect obtained over the whole claimed range is not relevant for the assessment of novelty, because novelty and inventive step are two distinct patentability requirements. A technical effect that occurs in a claimed range does not establish the novelty of a numerical range that is novel in itself but only confirms the novelty of this claimed numerical range, which has already been established. The question of whether there is a technical effect or not, however, remains to be answered in the context of inventive step (see T 1233/05 [4.4]; T 230/07 [4.1.6])

[3.4] Thus, for the above reasons the Board comes to the conclusion that the subject-matter of claim 1 is novel over documents D1 to D4.

The Board then remitted the case for further prosecution.

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

The file wrapper can be found here.

J 14/12 – Debit (Dis)order

This decision deals with a request for the reimbursement of certain fees for a divisional application.

On filing the divisional application on EPO Form 1001E, no mode of payment was specified under point 42 “Payment” of that form. An “Internal fee calculation sheet”, which is automatically generated by default by the online filing system using the data entered in EPO Form 1001E, was attached to the form in which the filing fee, the fee for a European search and the renewal fees for the 3rd to 10th years were listed by the applicant.

On October 20, 2010, the EPO received the following request:

On the basis of this request the Receiving Section (RS) gave the instruction to debit the filing fee and the search fee. No renewal fees for the 3^rd to 12^th years were paid by the applicant, or debited from the representative’s account on the basis of his request of 20 October 2010, within four months after the filing date.

After having been informed accordingly by the EPO, the applicant’s representative, on March 14, 2011, paid the renewal fees for the 3^rd to 12^th years and the additional fees of 50% relating to all of those renewal fees. Together with these fees, the filing fee and the search fee were paid a second time; this second payment was later refunded by the EPO.

With a letter dated March 18, 2011, the appellant requested, as a main request, that the additional fees for the 3^rd to 12^th years be refunded, and, as an auxiliary request, that the additional fees relating to the renewal fees for the 3^rd to 10^th years be refunded. It took the view that the respective renewal fees for the 3^rd to 12^th years were paid in time. After having realized the omission in EPO form 1001E, the appellant, with its letter of 20 October 2010, had requested that the fees which fell due in relation to the filing of the divisional application be debited. This authorization constituted a timely payment of all fees listed on the “Internal fee calculation sheet” of the EPO, including the fees for the 3^rd to 10^th years. The same applied for the 11^th to 12^th years following decisions T 170/83 [6], and T 152/82 [8-9].

The RS rejected both the main and the auxiliary request.

The Board partially allowed the appeal:

[2] Under A 86(1), first and second sentences, renewal fees for the European patent application shall be paid to the EPO in accordance with the Implementing Regulations. These fees shall be due in respect of the third year and each subsequent year, calculated from the date of filing of the application. R 51(3), first sentence, provides that renewal fees already due in respect of an earlier application at the date on which a divisional application is filed shall also be paid for the divisional application and shall be due on its filing. On 1 October 2010, the filing date of the divisional application, renewal fees for the earlier application with the filing date of 2 September 1999 had fallen due for the 3^rd to 12^th years (2000 - 2011).

[3] These fees and any renewal fee due within four months of filing the divisional application may be paid within that period without an additional fee (R 51(3), second sentence). As R 51(2) also provides, in case a renewal fee is not paid in due time, the fee may still be paid within six months of the due date, provided that an additional fee is also paid within that period. Consequently, payment of the renewal fees that fell due for the present divisional application could be made until 1 February 2011 without an additional fee and until 1 April 2011 with an additional fee of 50% of the belated renewal fee (Article 2(1) Rules relating to Fees of 20 October 1977 as adopted by the decision of the Administrative Council of the European Patent Organization of 7 December 2006 and as[last]amended by the decision of the Administrative Council of 9 December 2008, Supplement to OJ EPO 2/2009 (RFees) and Schedule of fees and expenses of the EPO (applicable as from 1 April 2010), 1 A.5, see Supplement 1 to OJ EPO 3/2010).

[4] On 20 October 2010 the applicant’s representative wrote a letter to the EPO which included the following wording:

“It is kindly asked to debit the fees which fell due for payment with the filing of the above-mentioned divisional application from deposit account No. 28000610.”

[5] This mode of payment is not provided for in Article 5(1) RFees 2008.

[6] Under Article 5(2) RFees 2008 the President of the EPO may allow other methods of paying fees than those set out in paragraph 1. In the Arrangements for deposit accounts (ADA) and their annexes (valid as from 1 April 2009), Supplement to OJ EPO 3/2009, the President of the EPO made available debiting procedures in respect of fees (pt 6.1 ADA). Debiting occurs in principle on the basis of a debit order signed by the account holder and may be a debit order for individual fees that may be filed on paper, preferably on EPO form 1010 (pt. 6.2 ADA). The debit order must be clear, unambiguous and unconditional. It must contain the particulars necessary to identify the purpose of the payment, including the amount of each fee or expense concerned, and must indicate the number of the account which is to be debited. Provided there are sufficient funds in the deposit account to cover the total fee payments indicated for the application referred to in the order or, in the case of an order containing a list of applications for each application referred to, this date is considered to be the date on which payment is made (pt 6.3 ADA).

[7] When read in conjunction with the “Internal fee calculation sheet”, the debit order received on 21 October 2010, in which it was asked to debit the fees which fell due for an explicitly mentioned divisional application, was clear, unambiguous and unconditional as regards the 3^rd to 10^th renewal fees. The debit order also indicated the number of the account which was to be debited. In the Board’s judgment, in the case at hand, the purpose and amount of each of these fees were clearly derivable from the “Internal fee calculation sheet”, including the renewal fees for the 3rd to 10th years. By debiting the filing fee and the fee for a European search the EPO showed that it heeded the debit order in combination with the “Internal fee calculation sheet”, filed as an attachment to the application, irrespective of whether it was obliged to do so or whether the “Internal fee calculation sheet” was uploaded to the electronic file. Consequently, 21 October 2010 is to be considered as the date on which the payment for the renewal fees for the 3^rd to 10^th year was made and, in relation to these years, no additional fee fell due. Payments of fees made without a legal basis are to be reimbursed.

[8] As to the renewal fees for the 11^th and 12^th years, the purpose and the amount of each of these fees were neither stated in the debit order nor were they contained in the “Internal fee calculation sheet”. As a consequence, the conditions for a valid debit order set out in the ADA as mentioned above were not fulfilled. A valid payment was effected on 14 March 2011 only, i.e. within the six-month time-limit provided for in R 51(3). Consequently, in respect of the renewal fees for the 11^th and 12^th years, the additional fees fell due and cannot be reimbursed.

[9] No different conclusion can be drawn from the decisions of the Board of Appeal in cases T 170/83  or T 152/82. Decision T 170/83 dealt with a case in which the purpose (payment of the opposition fee) was clear. The same applies in relation to decision T 152/82 in which the purpose of the payment (appeal fee) was explicitly indicated.

[10] Consequently, the appellant’s main request is not allowable, but the auxiliary request can be allowed.

[11] The conditions for reimbursement of the appeal fee are not met in the present case. Under R 103(1)(a) the appeal fee shall be reimbursed where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation. The Board cannot identify any procedural deficiencies. In the present decision, the Board is taking a view on the question of interpretation of the applicant’s debit order that differs from that of the RS. However, the fact that the Board has come to a different conclusion from the department of first instance does not by itself mean that the latter committed a substantial procedural violation (see for example decisions T 87/88; T 538/89, T 182/92) but is rather a matter of judgment, which does not amount to a procedural violation (see for example decision T 182/92 [7] and Case Law of the Boards of Appeal of the EPO, 7^th edition 2013, IV.E.8.3.5). Consequently, the request for reimbursement of the appeal fee must be refused.

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

The file wrapper can be found here.

T 816/09 – Untechnical Measurements

This is an examination appeal.

Claim 1 on file read:

1. A system for operating a virally marketed facility, comprising:a processor;a memory coupled to the processor;a user interface coupled to the processor;wherein the processor is to:

• measure virality of the facility based on a conversion rate and a propagation rate;
• determine potential options for increasing virality; and
• execute potential options for increasing virality.

The Examining Divison (ED) considered that the problem addressed was of a business nature, namely how to enhance the profit of a virally marketed business facility. The solution proposed was to measure the effectiveness of the viral marketing campaign by tracking the results (number of invitations, number of registrations) and to pursue only business options that increased the virality and profitability of the campaign. No technical problem other than the implementation of the business model on a computer system appeared from the application. The implementation did not go beyond notorious technical functions associated with any business/administrative task on a computer system. Thus the ED refused the application for lack of inventive step.

The Board came to the same conclusion:

[3] In the light of A 52(1)(2)(3), A 56 EPC 1973 requires a non-obvious technical contribution (see e.g. T 641/00 [headnote 1]; T 1784/06).

[4] The Board does not consider the problems put forward by the appellant to have a technical character.

Viral marketing utilises human social behaviour to (self-)propagate information which effectively advertises a facility (such as a website). It is a marketing person’s choice to consider high propagation and conversion rates of an advertisement as indicators of success of a marketing campaign and to call those rates the virality of the marketed facility.

It is the marketing person that seeks to increase the marketing success as judged by his/her definition of virality.

[5] The Board does not consider that any “measurement of any property is an inherently technical task” […]. It will crucially depend on what is “measured”, and whether or not the measurement involves technical means. For example, the description mentions […] that the ultimate “measure” of success is revenue, which is a financial concept. At paragraph 0047, the virality of a website is measured by evaluating public discussion, which could simply be achieved by interviews (mental acts).

[6] Thus, the technically skilled person comes into play only at the implementation level. However, counting click rates to measure the popularity or virality of a website does not require an inventive step.

This finding is implicitly acknowledged by the application which leaves technical implementation details to the skilled reader.

Trying out whether a variation of a website increases or decreases its popularity does not imply any non-obvious technical consideration, either.

[7] The virality of a website (or other facility) might conceivably be increased by providing it with innovative technical features.

However, claim 1 does not define the nature of the “options” to be executed. Hence, no technical contribution can be derived from the “options for increasing virality”. This view is confirmed by the options defined in claim 2, such as providing additional commercial aspects of the facility […].

[8] Therefore, the Board judges that the system for operating a virally marketed facility according to claim 1 and the corresponding apparatus according to claim 7 do not involve an inventive step.

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

The file wrapper can be found here.

T 1674/12 – Christmas With Nespresso

In this decision on a Nespresso ® patent – which has excited Tufty the cat some time ago (see here) – Board 3.2.04 in a five-man composition inter alia had to deal with a whole bunch of partiality objections raised by the four opponents after a somewhat chaotic series of oral proceedings (OPs) before the Opposition Division (OD). To make a long story short, OPs had been summoned for September 8, 2011, but the OD decided to continue on September 9, although several opponents objected to this and were absent on that day. However, at the beginning of the OPs on September 9, the OD made only one statement and then decided to adjourn the OPs after the patent proprietor had requested it to do so. The OPs were resumed on April 18, 2012.

The decision also contains an interesting paragraph on a statement that the EPO spokesman made after the decision of the OD.

*** Translation of the French original ***

[2.1] Opponents 1 and 3 have essentially required [the Board] to set aside the impugned decision and to remit the case to the first instance in order for it to be dealt with by an OD in a different composition. They have alleged a series of procedural violations which they considered to be substantial, in particular a bias of the OD resulting from seven particular points seen in combination and which were presented both in writing and orally. Moreover, the continuation of the opposition proceedings after an appeal had been filed constituted a substantial procedural violation in itself.

[2.2] The first point intended to demonstrate the bias of the OD concerns the fact that the date for OPs was fixed three months after the end of the time limit for filing an opposition (and, more generally, the alleged acceleration and deceleration of the proceedings in line with the instructions of the patent proprietor). When this time limit had expired on February 12, 2011, four oppositions had been filed by opponents 1 to 4. The patent proprietor has commented on these oppositions on March 29, has referred to a series of infringement proceedings and has asked for an acceleration of the proceedings, i.e. for OPs to be held before September 23, 2011, because a hearing by a Dutch tribunal was to be held on that day. The OD has allowed this request.

In view of the fact that the patent proprietor has given reasons for his request for accelerated proceedings by providing evidence that the national infringement proceedings had indeed been opened (incidentally, their existence has not been contested by the opponents), the Board cannot see why it would have been wrong to summon [the parties] to OPs to be held on September 8, 2011. The assertion according to which the OD submitted to the instructions of the patent proprietor and has accelerated and then slowed down the proceedings has not been proven. First, the acts of the patent proprietor do not attest that it undertook efforts in order to slow down the proceedings. It has to be noted that the efforts undertaken in order to stay the national proceedings (and not the opposition proceedings) until there was a final result of the opposition proceedings are in line with the request for acceleration. The patent proprietor has only once requested a stay of the proceedings, during the OPs held on September 9, 2011, under very special circumstances where the adjournment of the proceedings was indeed the only correct procedural solution, even if this fact has only been acknowledged (reconnu) at a later time (see below). Moreover, the patent proprietor has consistently requested accelerated proceedings.

On the other hand, the fact that the OD has not allowed the request of opponent 1 for a stay of the proceedings and has not cancelled the OPs foreseen on April 18, 2012, after opponent 1 had filed the statement of grounds in appeal case T 112/12 does not justify the suspicion of partiality on behalf of the OD. As explained below, this appeal had no suspensive effect. The letter of opponent 1 dated April 13, 2012, i.e. five days before the OPs to which [the parties] had already been summoned, only informed the OD on the filing of the statement of grounds but did not draw the attention of the OD to any new fact that could have an impact on the OPs, such as the stay of national proceedings. Under these circumstances, the OD was not entitled to deal with the appeal and the arguments and facts presented together with the statement of grounds in appeal case T 111/12 were not part of the opposition proceedings. Moreover, a stay of national proceedings is no good reason for staying the opposition proceedings before the EPO. Quite to the contrary, what is desirable is for the proceedings to come to an end quickly, and all the more so because the OPs of April 18, 2012, were only the continuation of OPs that had been interrupted.

To sum up, the OD has conducted the proceedings in a way that is not only formally lawful but also reasonable.

[2.3] The second point which [the opponents] invoke concerns the assertion according to which the opponents had been limited in their liberty of expression during the OPs of September 23, 2011, by the chairman of the OD who had told the parties that they had to stick to presenting their own arguments and should not develop arguments that had already been presented by the other parties. This objection is difficult to evaluate because the minutes do not mention this instruction and the parties do not agree with each other as to whether such an instruction has indeed been given. According to the patent proprietor, the chairman of the OD has simply expressed the fact that it was not useful to repeat what the parties had presented in writing because the members of the division were fully aware of [those arguments].

Instructions of that kind on behalf of a chairman of the OD are not uncommon in such a situation and appear to be justified in view of the number of parties and the complexity of the file.

What is decisive in the eyes of the Board […] is that the minutes do not comprise any indication that the opponents had had the impression of being unable to present their arguments and had protested, for instance by requesting this fact to be mentioned in the minutes. Quite to the contrary, the fact that the OPs could not be terminated on the first day makes the Board think that the parties have not been limited in the way in which they presented their case.

As a consequence, the Board comes to the conclusion that it has not been established that the opponents had been limited in the way in which they presented their case.

[2.4] The third point which [the opponents] invoke concerns the question of whether the OD has helped the patent proprietor in drafting new claims in the course of the OPs. According to the minutes […] the OD has concluded that certain amendments did not extend the [claimed] subject-matter beyond the contents of the application as filed, but has identified an essential feature that was not found in claim 1 anymore. Based on this opponent 1 concludes that the division had suggested a particular wording of the claim.

First of all, it has to be noted that in a situation where a great number of amendments has been discussed as to [their compliance with] A 123(2) it is absolutely normal [for the OD] to state which are the amendments that do not comply with the requirements of this article. Otherwise, the patent proprietor would have to file a great number of requests in advance in order to consider all possible combinations.

Moreover, apparently the patent proprietor has not drafted a new claim after this indication. [The Board] has the impression that then auxiliary request 2, which had been on file before, was discussed. It is true that new auxiliary requests have been filed during the second OPs held on April 18, 2012. The Board cannot see how the OD could have helped the patent proprietor in drafting these claims either. It has simply announced during the OPs held on September 9, 2011, that it believed that the claim to priority was not valid. Even if the OPs of September 8, 2011, had been correctly adjourned, this conclusion would have had to be communicated to the parties in writing, well before the continuation of the proceedings on April 18, 2012. Consequently the patent proprietor had not been favoured by the division as a consequence of having already been informed on September 9, 2011.

[2.5] The fourth point which [the opponents] invoke was the fact that one of the members of the OD (other than its chairman) had participated in the grant of a patent for a divisional application of the impugned patent (EP 2181629). The communication concerning the grant of this patent has been issued on July 29, 2011, shortly after the summons to OPs and before the OPs to be held on September 8. The opponents express the opinion that the first examiner of the OD at least has shown partiality, by granting a patent for a divisional application without waiting for the decision regarding the prior patent, although he was aware of the objections raised against the prior patent.

In this respect one has to consider that it is admissible for a member of an Examining Division (ED) to participate in opposition proceedings concerning the same patent, provided that he does not chair the OD, see A 19(2), and the opponents have acknowledged this fact. This regulation differs from the one applicable to members of the Boards of appeal, A 24(1). In view of the fact that an examiner who has participated in grant proceedings for a patent may, under the provisions of the EPC, be member of the OD and decide on the validity of the same patent, it can hardly be criticised that a member of an OD has participated in the examination of another patent, even if the latter is related (apparenté). Such participation cannot justify that the member be excluded or suspected of partiality. Considering the fact that the examination file wrappers are open to public inspection, an examiner who participates in the examination of a divisional application cannot be said to be in possession of any particular piece of information that is not available to everyone and which could somehow justify any bias whatsoever.

The assertion of opponents 1 and 3 according to which the first examiner has proven biased is based on the fact that they consider that the examiner ought not take a decision regarding a divisional application before the outcome of the opposition against the prior patent on which it is based is known, but that he should above all take it into account when deciding the fate of the divisional application. In this respect [the Board] wishes to remind [the opponents of the fact] that the decision to grant a patent is taken by the ED and not by the first examiner alone. The Board acknowledges that a way of proceeding as suggested by the opponents appears to be, as such, perfectly reasonable and perhaps even preferable if the conditions and the organization of the treatment of the files by the ED allow to [proceed in that way]. However, to require the ED to mandatorily wait for the outcome of another case that is dealt with by another division, even if the file is related, would jeopardise the independence of the ED. This makes it very clear that the decision of the examiner to proceed with the divisional application cannot be considered as a sure sign of partiality.

[2.6] The fifth point concerns the continuation of the OPs on September 9, 2011, although the summons only mentioned September 8, and the opponents 1 and 3 had expressed their disagreement. This very Board (in a different composition) has decided in another case (T 2534/10) that OPs could not be continued the day after without there having been summons respecting the minimum time limit of two months (R 115). Thus the continuation of the OPs the day after constitutes a procedural violation, irrespective of whether the opponents 1 and 3 had protested against this decision or not. In order to continue the proceedings on September 9, an explicit agreement of all the parties would have been required. The above-mentioned decision of the Board has also made clear that a remittal was necessary only if this error had had an impact on the final decision, and has ordered the OD to resume the proceedings, but only from the point at which the error had occurred. According to this decision, the proceedings had to be remitted only for resuming the procedural acts that had been made on the second day, for which there had not been summons.

This notwithstanding, the Board wishes to remind [the opponents] that decision T 2534/10 has been taken on April 23, 2012, and that the reasons for the decision have been notified on July 31, 2012, i.e. after the OPs held on September 9, 2011. The OD was not necessarily aware of the fact that it committed a procedural violation, even if the opponents had invoked such an argument. It follows that the behaviour of the OD cannot be considered to have been biased for this reason. [The Board] also has to remind [the opponents] that their arguments regarding a possible procedural violation, although they had been raised at once, could only have been considered during an interruption of the OPs, i.e. in the evening of September 8, during the night from September 8 to September 9 or before the opening of the OPs on the next day. Under these circumstances, the fact that the OD finally acceded to the requests of the opponents without any excessive delays and adjourned the OPs, as explained above, cannot establish a bias of the OD.

According to the minutes, the OPs of September 9 have been opened and the OD has announced that the priority (D1) could not be validly claimed because of the feature “characteristic position of the axis in the housing”. Then the patent proprietor requested an adjournment of the OPs, which has been granted. The OPs were resumed on April 18, 2012, after summons in due form and respecting the time limits had been issued. Assuming the minutes to be correct, no procedural act involving the parties has taken place on September 9. The conclusion regarding the deliberation of the OD could also have been notified in writing. This decision was not contrary to the requests (pretentions) of the opponents either because the OD has decided in their favour. The parties have been informed of this decision both through the communication of the minutes and by the chairman of the OD who has repeated the announcement of the decision as soon as the OPs of April 18 were opened. Even if the proceedings had not been continued on September 9, the outcome of the deliberation of the OD would, as usual, have been communicated [to the parties] by sending the minutes or together with the summons to the new OPs. In other words, the proceedings would have been essentially the same if the OD had adjourned the OPs in the evening of September 8, 2011, without continuing them on the next day. Opponent 1 has admitted that the continuation of the proceedings on September 9 had not adversely affected it, but it found strange that the proceedings had been continued despite the protests of two of the opponents and adjourned at once at the request of the patent proprietor. The opponents 1 and 3 thought that this again showed the bias of the OD. However, by adjourning the OPs the OD has also decided in favour of the requests of the opponents 1 and 3 without any excessive delay and has satisfied the procedural requirements by summoning to new OPs respecting the time limit laid down in R 115.

[2.7] The sixth point concerns the contents of the minutes of the OPs of September 8 and, more particularly, of September 9. In particular, based on the testimony of opponent 2, opponent 3 has pointed out that the patent proprietor had filed and then withdrawn a request during the OPs of September 9, without this having been mentioned in the minutes. Opponents 1 and 3, which were absent on September 9, therefore, wonder what has really happened on that day. As a matter of fact, some parties have requested a correction of the minutes: the patent proprietor in its letters dated November 14 and December 14, opponent 2 in its letter dated December 1, and opponent 3 in its letter dated November 9, 2011. According to the opponents, on September 9, the patent proprietor had filed an auxiliary request 9. The patent proprietor has contested this allegation. The OD has refused to correct the minutes and has justified its position in a letter dated January 10, 2012. In view of these contradictory statements, the Board is unable to decide whether the minutes are indeed defective or incomplete. The subsequent proceedings at least appear not to imply this and the way in which the OPs of April 18, 2012, took place also appears to be coherent with the events as recorded in the minutes of September 8-9, 2011. It follows that the Board has no objective reason to conclude that the events of September 9 differ from what is recorded in the minutes.

[2.8] The seventh point concerns a declaration on behalf of the press relations department (service de presse) of the EPO, which has been published in different media and languages after the OPs had been terminated. On April 19, 2012, the Reuters agency, for instance, has published an article containing the following text:

“The EPO confirmed it has upheld a Nestle patent issued in 2010 concerning the way Nespresso capsules fit its machines, with minor modifications, spokesman Rainer Osterwalder said, adding the ruling could be appealed.

“The patent may stand but in an amended form”, Osterwalder said. “The essential part of the invention has not been touched by the limitations.”

Obviously, the EPO is not entitled to issue speculations on what constitutes the essential part of the invention. But even letting aside the question of whether the press relations department has been correctly cited, such a declaration obviously is to be imputed (reste le fait) to the press relations department and not to the OD. To deduce any bias whatsoever of the OD during the proceedings from a declaration that another department of the EPO has made after the closing of the OPs would presuppose that this declaration has been issued by the OD itself, which has not been confirmed.

[2.9] Opponents 1 and 3 have pointed out during the OPs before the Board of appeal that even if the different points mentioned, when considered separately, would not justify a bias on behalf of the OD, they nevertheless showed, when considered together, that the patent proprietor had been systematically favoured.

Objectively, the OD has made every effort to deal quickly with a very complicated case. Its desire to continue the OPs on September 9 was wrong, but it has renounced, either because it realised its error or because a corresponding request had been filed by the patent proprietor. The adjournment of the OPs was a legal necessity and corresponded to what opponents 1 and 3 had requested on the previous evening. It is regrettable that a badly drafted press release had been issued after the OPs, but it cannot be imputed to the OD. As the outcome of opposition and appeal proceeding hardly ever satisfies all parties, it is all the more important to convince the parties that they have been treated in an impartial manner.

This being said, according to the case law of the EPO, it is not sufficient for establishing a bias that one of the parties may have a subjective impression [of partiality], but one has to include an objective observer (see T 190/03 [9] and T 281/03 [9]). Even though the Board considers that the reasons invoked [by the opponents], when considered together, do not objectively establish a bias, it regrets that two of the opponents have had this impression.

[2.10] It follows that the Board cannot objectively establish any bias in the behaviour of the OD or any substantial procedural violation. In view of the arguments filed, the request for a remittal is unfounded.

[2.11] During the written proceedings, but not during the OPs, opponent 3 has submitted that the impugned decision was insufficiently reasoned. It refers in particular to page 35 of the decision, where [the OD] allegedly assessed the existence of an inventive step without defining the problem on which the invention was based. This appears to be wrong because the problem to be solved in view of D7 is defined on page 34. The OD then summarises the arguments of the opponents and explains the differences with respect to the prior art. It is only then that the division notes that the person skilled in the field of D7 would not have combined with asymmetric capsules. Therefore, the Board cannot see in which respect the reasoning of this decision is incomplete or missing. That the opponent did not find this reasoning persuasive is another matter. It follows that the ground invoked [by opponent 3] cannot justify a remittal either.

[2.12] Finally, opponent 1 considered that the continuation of the OPs in April 2012 constituted a substantial procedural violation because on January 12, 2012, it had filed an appeal against the communication of the OD dated January 10, 2012. In this communication the OD had refused to modify the minutes (see point [2.7] above) and presented a summary of the OPs of September 9. Moreover, the OD had announced that the proceedings were to be continued and that there would be summons to new OPs. Before that, opponent 1 had requested, in letters dated December 1 and 8, 2011, that the proceedings would be resumed before an OD in different composition, that the minutes be corrected and that [the OD] would at least issue an appealable decision. Opponent 1 considers the communication dated January 10 to constitute an intermediate decision by which the division dismissed its requests, or at least a refusal to issue an appealable decision. According to [opponent 1], the appeal filed on January 12 (T 112/12) should have led to a stay of the proceedings in any case. Consequently, the continuation of the proceedings constituted a substantial procedural violation.

[2.13] As appeal T 112/12 has been withdrawn, the Board does not have to consider the question whether appeal T 112/12 may still have potential legal effects that can be examined within the framework of another appeal. Thus the Board will limit itself to commenting on the suspensive effect of the appeal as defined in A 106(1), second sentence.

It follows from the fact that A 106(1) contains, side by side, two sentences one of which defines decisions that can be appealed, and the other what the effect of an appeal is, that this suspensive effect only applies to appeals as defined in the first sentence, i.e. appeals filed against the decisions listed in the first sentence, which comprise decisions of the OD. For these decisions A 106(2) stipulates that only a decision that terminates proceedings as regards one of the parties can be appealed, unless the decision allows a separate appeal. The communication of the OD dated January 10, 2012, has not terminated proceedings, nor did it mention the possibility of a separate appeal. The question whether it is possible to file an appeal outside the conditions laid down in A 106 is irrelevant, because the appeal T 112/12, for which the question could have arisen, has been withdrawn. In any case, for such an appeal A 106 does not provide any suspensive effect. According to the spirit of A 106 the suspensive effect concerns decisions that terminate proceedings before an instance in order to avoid that the impugned decision might have legal effects (first sentence of A 106(2)), or, alternatively, it concerns decisions for which the instance that makes the decision can itself provide the possibility of filing an appeal (second sentence of A 106(2)). This second sentence clearly stipulates that the instance that makes the decision remains in charge (maître) of the proceedings until it takes a decision that terminates these proceedings or allows a separate appeal. Otherwise, the parties would be free to hinder the competent department from dealing with the files in an efficient way. According to A 106, in such a procedural situation, the OD has to take a decision on whether or not it will allow a separate appeal. The parties are not entitled to this option. If, as in the present case, the OD has not expressly allowed a separate appeal, and a party files an appeal, then the OD is entitled to note that this appeal does not satisfy any of the conditions of A 106(2), and in particular, of the conditions of the second sentence of this provision, because its decision did not offer the possibility of a separate appeal, and to pursue the proceedings. If it was not entitled to do so, then the purpose of A 106, which is to allow the decision-making instance to bring the proceedings to an end, could not be reached.

However, the purpose of the limitation of the possibility to file an appeal to decisions which terminate proceedings as regards one of the parties and decisions that allow a separate appeal would be circumvented if any appeal against any procedural act made during examination or during an opposition had a suspensive effect. The Board notes that if an appeal concerns a case that is not foreseen by A 106(1) and (2) (that is to say, an appeal against a procedural act that is not mentioned in A 106(1) and (2), or a decision of the OD that does not allow a separate appeal), this appeal does not have a suspensive effect irrespective of whether the appeal is admissible (recevable) or not. The Board wishes to emphasise that this finding is not in contradiction with decision J 28/03, because decision J 28/03 obviously has not considered the procedural situation from which the question that is presently before the Board has arisen.

[2.14] In the present case [the opponents] cannot invoke any suspensive effect irrespective of whether appeal T 112/12 is admissible or not. This is not an appeal against one of the decisions mentioned in A 106 (1) and (2), for which [the EPC] provides a suspensive effect. Thus the OD was entitled to note this fact and to exercise its discretionary power such as to pursue the proceedings. The Board does not see how the decision to pursue the proceedings can be seen to be based on an erroneous assessment. Therefore, opponent 1’s request for a remittal of the present case cannot be allowed. Its request to refer this question to the Enlarged Board of appeal has been withdrawn during the OPs before the Board. Incidentally, this request could not have been granted because the decision of the Board is directly based on the interpretation of the EPC by the Board and because the Board is not aware of any divergent decision on that topic.

[2.15] As the case is not remitted, it would not make sense to decide on the composition of the OD.

Finally the patent was revoked because the request on file did not comply with the requirements of A 123(2).

Having had a glimpse of the courtroom atmosphere in this case, I am sure you will find Christmas dinner with aunt Aglaé relatively enjoyable.

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

The file wrapper can be found here.

J 17/12 – Entry Denied

This decision deals with the question whether a transfer of a European patent application should be recorded in the register although the proceedings for grant have been suspended under R 14.

If you just want a short summary of the Board’s answer, here it is: No.

If you want to know why, please read on.

The application under consideration was filed by Mr Fein in 2006. In 2008, there was a transfer to Reprise Pharmaceutics. On February 7, 2011, a communication under R 71(3) was issued. On March 28, 2011, Ferring instituted entitlement proceedings in the District Court of The Hague. The proceedings were stayed. On April 20, Reprise filed a request to record the transfer of the application from Reprise to Allergan. Allergan requested that the proceedings be resumed. The Legal Division (LD) recorded the transfer but refused to resume the proceedings. Both parties appealed the decision.

Transfer of the application

[2.1] Ferring’s first argument is that once the EPO knew that Reprise’s title to the application had been put in doubt by virtue of the national entitlement proceedings, it should not have accepted on the evidence supplied by Reprise that the application had been transferred to Allergan.

[2.2] The LD rejected this argument and the Board agrees. The general principle under the EPC is that an application for a European patent, as an object of property, is subject to national law and may be transferred (see A 74 and 71). The Board has no reason to doubt that the present application was, as an object of property, transferable to Allergan and that it was indeed transferred, subject no doubt to whatever claims Ferring might establish under national law.

Recording of the transfer in the register: the relevant provisions

[3.1] R 22(1) provides that the transfer of a European patent application shall be recorded in the European Patent Register at the request of an interested party upon production of documents providing evidence of such transfer. R 22(2) provides that such a request may be rejected only if R 22(1) has not been complied with. Subject to Ferring’s argument in point [2.1], above, it is not disputed that the evidence filed by Reprise satisfied the formal requirements of the rule.

[3.2] As to R 14(1), this provides that if the relevant conditions are satisfied (which they were in this case) “the proceedings for grant shall be stayed”. Allergan argues that the recording of a transfer of a patent application in the register is not part of the proceedings for grant. The LD agreed.

[3.3] There are certainly no express provisions of the EPC indicating that R 22(1) and (2) should be put on hold in circumstances where proceedings for grant have been stayed under R 14(1). This is in contrast, for example, to R 15, which expressly provides that in the period during which proceedings for grant are stayed neither the European patent application nor the designation of any Contracting State may be withdrawn.

Recording of the transfer during a stay: the case law

[4.1] So far as the Board and the parties are aware, there is no decision of the Boards of Appeal directly on the point. In the two related cases, J 38/92 and J 39/92, the Legal Board made the general statement that a stay of the grant proceedings has the effect that during the suspension neither the EPO nor the parties can validly perform any legal acts. On the contrary, the grant proceedings remain unaltered in the legal state existing at the point in time of the stay. Taken by itself this general statement might be taken to cover the present case and rule out Allergan’s arguments.

[4.2] It is, however, necessary to have regard to what the facts of those two cases were. A third party had brought national proceedings against the applicant, as a result of which it had obtained a decision of the national court that the two applications were to be transferred back to the third party, and belonged to it (die Patentanmeldung auf die dritte Partei “zurückzuübertragen ist und ihr zusteht.”) The third party had not meanwhile applied for a stay of the grant proceedings but rather, only after obtaining the decision of the national court and then relying on this as evidence, filed a request for transfer of the applications to it. The request was granted but on appeal the Board decided this way of proceeding was wrong: a request under R 20(1) EPC 1973 (now R 22(1)) must be based on evidence of a transfer document, and such evidence was missing. The Board went on to conclude that the request should have been dealt with as a request under A 61(1)(a) by the third party to prosecute the application as its own and that the EPO should have stayed the grant proceedings under R 13(1) with effect from the date of the request. The Board then added the comment cited above, namely that the stay of the grant proceedings meant that neither the EPO nor the parties could validly perform any legal acts and that the grant proceedings remain unaltered in legal state existing at the point in time of stay (“Die Aussetzung des Erteilungsverfahrens hat die Wirkung, daß in dem ausgesetzten Verfahren weder das Europäische Patentamt noch die Parteien wirksam Rechtsakte vornehmen können. Das Erteilungsverfahren verbleibt vielmehr unverändert in dem Rechtsstadium, in dem es sich zum Zeitpunkt der Aussetzung befand.“) See point [2.5] of the reasons in both cases. This was relevant in the particular circumstance of J 38/92 because meanwhile (i.e., after the grant proceedings should have been stayed) the mention of the grant to the original applicant had been published in the Official Journal. The Board thus made it clear this act of the Office had had no legal effect. See points [2.5] and [2(b)] of the reasons and the order, respectively. The factual position was not the same in J 39/92 (where the comment appears in identical terms): in this case there appear to have been no acts by the EPO or the parties which the Board needed to make clear were invalid. The remark therefore appears to have been an obiter dictum.

[4.3] In the light of these facts, the present Board therefore considers that the above general statement cannot be taken as necessarily applying to the facts of the present case. The mention of the grant in the Official Journal, which was the relevant act of the EPO in J 38/92, was undoubtedly a step in the proceedings for grant. It cannot be said with a similar level of certainty that the same is true of the registration of the transfer of the application.

[4.4] Ferring relied on the decision in J 20/05. In that case, the issue was whether an applicant was entitled to file a divisional application at a time when proceedings for grant of the parent application had been stayed. Ferring pointed to the fact that the Board there held that the entitlement to file a divisional application was a procedural right that derived from the applicant’s status as applicant under the earlier application, and thus it had to be examined whether the applicant was entitled to file the divisional application by virtue of being the applicant in the earlier parent application. The Board held that since the rights in respect of a divisional application could only be derived from the parent application, the disputed right of the applicant to file the parent application could not form a sufficient basis for a right to file a divisional application. Ferring argued, applying this reasoning, that when the request to record the transfer of the application was filed by Reprise, there was doubt about who was the person lawfully entitled.

[4.5] While this decision could no doubt support Ferring’s position, the Legal Board there made the point, citing J 2/01, that the entitlement to file a divisional application is a procedural right that derives from the applicant’s status as applicant under the earlier application (point [2] of the reasons). The point was repeated in J 9/12 [3]. The present Board cannot be confident that a right to have a transfer of an application registered following a request under R 22(1), which may be filed by any interested party, is such a procedural right. The Board therefore prefers to approach the question applying more general principles, as set out below.

Stay of proceedings: the general principles.

[5.1] The purpose of R 14(1) is to protect the third party’s interests during entitlement proceedings, at least provisionally (J 7/96 [2.3]; J 15/06 [7]; J 20/05 [3]).

[5.2] Whether or not the recording of a transfer literally constitutes part of the “proceedings for grant” (and thus falls within the express wording of R 14(1)), the decision in J 20/05 demonstrates that the effect of a stay under R 14(1) is not limited to a stay of “proceedings for grant”, understood literally: other acts may also be excluded by a stay if they are inconsistent with the objective of protecting the third party’s rights. Rule 14 EPC 1973 can prevent, as lex specialis, other acts, e.g., as in J 20/05, the filing of a divisional application (see also G 1/09 [3.2.5], and J 9/12 [3,5]). In J 20/05 the filing of a divisional application was held to be excluded because of the need to protect the third party’s rights in the parent application. The Board said:

“... the appellant’s argument that it is not forbidden by R 13(1) to file a divisional application during suspension of the parent application proceedings cannot succeed. 

Even if the filing of a divisional application during suspension of the parent application proceedings is not expressly excluded by R 13 EPC [1973], R 13 is stated in general terms and it is consistent with its objective of protecting the third party claimant’s rights that the filing of a divisional application during suspension should be prevented. 

It would be inconsistent with and contrary to the fundamental objective of the provisions on suspension, on the one hand to suspend the parent application proceedings because of the national entitlement proceedings, but on the other to allow the filing of a divisional application by the applicant whose entitlement is challenged.”

See point [3] of the reasons, and also J 9/12 [5].

Registration of transfer during a stay: the Board’s conclusions

[6.1] The question is thus whether the registration of a transfer of an application is inconsistent with the fundamental objective of the suspension of the proceedings, which is to protect the third party claimant’s rights in the application.

[6.2] The core provision of the EPC so far as entitlement proceedings are concerned is A 61(1), which provides various remedies if “by a final decision it is adjudged that a person other than the applicant is entitled to the grant of the European patent”. In this respect it seems to the Board that if the EPO is to be required to act on such a decision, it needs to be a decision which establishes that the third party rather than “the applicant” is entitled to the grant. The Board considers that “the applicant” here can only mean the person entered on the register as applicant. The Board considers that a decision establishing that the third party rather than the former applicant, or indeed some other person, was entitled to the grant would not be sufficient for this purpose. It seems to the Board that if Allergan was correctly registered as the applicant, it was indeed necessary for Ferring to bring proceedings against Allergan, with all the increased costs which that involved. There would then also be nothing to prevent the application being subsequently transferred and registered in the name of another applicant. It follows that if the registered applicant can be freely changed while proceedings for grant are stayed, the third party’s attempts to obtain the remedies available under A 61(1) could be repeatedly frustrated.

[6.3] The LD originally took the view that following the registration of Allergan as applicant it was necessary for Ferring to bring proceedings against Allergan […]. In its decision, however, the LD changed its view: “… it is not necessary to institute separate entitlement proceedings before a competent court against the now registered applicant after a transfer of the application has taken place from the then registered applicant to the actual registered applicant.” […]. However, the Division does not appear to have taken into account in this context the significance of the reference to the “applicant” in A 61(1). The statement was also in fact made by way of introduction to the point that the entitlement proceedings had been brought against the person who was at the time registered as applicant (Reprise) and this was sufficient to entitle Ferring to a stay of the grant proceedings. As to this point, the LD was clearly correct.

[6.4] Allergan argued that the Board’s reading of A 61(1) is not correct: a final decision which establishes that Ferring is entitled to the grant will necessarily mean that no one else is entitled. It would in effect be a decision in rem. The Board disagrees with this argument. It would mean that a decision against a straw-defendant would oblige the EPO to implement the machinery of A 61. It is not even necessary to go to such an extreme example; it is not difficult to imagine non-collusive national proceedings in which a judgement on entitlement was obtained against some person other than the applicant.

[6.5] Allergan did not in fact argue in the alternative that a final decision obtained against a person who once was the applicant would, so far as the EPO is concerned in the application of A 61(1), be binding against a transferee from this applicant and who had since been registered as applicant. The Board considers that Allergan was correct not to do so. The effect of a final decision on any successors in title to the applicant would be a matter of national law. Rather, Allergan argued that if a transfer of the application was registered during the national entitlement proceedings, or even after a final decision was obtained, the third party could simply institute fresh entitlement proceedings and obtain a decision against that new applicant. It seems to the Board that this is the opposite of protecting the interests of the third party, given the expense and delay involved, and taking into account the fact that such proceedings would have to be brought in whatever was the appropriate jurisdiction according the Protocol on Recognition. A similar point arose in J 20/05, where it was argued, in the context of a divisional application being filed during suspension of the parent grant proceedings, that a third party could simply bring entitlement proceedings in respect of such divisional application, and apply to stay grant proceedings on that divisional application. The Board said:

“It has to be noted that it is not possible for the claimant third party to apply to the EPO for an automatic and immediate suspension of the divisional application proceedings by way of an extension of the suspension of the parent application proceedings. On the contrary, in order to have the divisional application proceedings suspended the third party would first have to bring (“open”) new national proceedings against the applicant in which it sought a judgment that it is entitled to the grant of a patent on the divisional application. The third party would then have to provide evidence that it had brought such proceedings and finally the matter would have to be decided by the EPO. All this would clearly put an additional heavy and undue burden on the third party and would be contrary to the objective of the suspension of the parent application proceedings, which is to protect its interests.”

See also J 9/12 [7].

[6.6] Allergan argued that it was important in the public interest that the register should reflect the true position so that, for example, if someone wished to acquire a licence in this case they would know that they should apply to Allergan and not Reprise. The Legal division also considered this informational role of the register to be an important factor. However, quite apart from the fact that anyone wishing to obtain a licence would presumably be re-directed by Reprise to Allergan, there is nothing to stop the filing, during the suspension of grant proceedings, of a request to transfer the application. The effect of a stay in the light of the Board’s decision will simply be that no action will be taken on the request during the suspension. While the fact of the transfer may not be apparent from the register, it will be apparent from an inspection of the public file, as will the decision to stay the grant proceedings itself. The public will therefore be sufficiently informed.

[6.7] The Board can accept that when it comes to implementing the mechanism of R 14 and R 15 it seems appropriate to consider the interests of the person who prima facie has the real interest in the application (here Allergan) rather than the interests of someone who prima facie no longer has any real interest in the application (here Reprise). However, for the reasons given below (point [8.4]), the Board considers that on such a request it would be appropriate to consider all the relevant circumstances, including the fact that the application had been transferred to a party with commercial interests in pursuing the remedies under A 61(1).

[6.8] Hence, the Board concludes, on the one hand, that the registration of Allergan as applicant while the grant proceedings were stayed failed to protect Ferring’s legitimate interests under A 61(1) as a third party and, on the other, that there are no sufficient practical or procedural objections against the suspension of any action to be taken on the request to register the transfer while proceedings are suspended.

Registration of transfer: referral of a question to the Enlarged Board of Appeal (EBA)

[7.1] In the light of the Board’s conclusion that the registration of Allergan as applicant should be reversed, Allergan requested that a question be referred to the EBA as follows:

“Can a transfer of a patent application be registered during a suspension of proceedings under R 14?”

[7.2] Allergan argued that a point of law of fundamental importance within the meaning of A 112(1) arises. Whether or not this is the case, the Board sees no need to refer the question. The Board has been able to come to a conclusion applying what it considers to be the established principles. It is also not in any doubt about the result and is not aware of any legal view-points expressed either in national case law or in legal commentaries which might cast doubt on the conclusion reached (see J 5/81 [11]).

The procedural consequence of reversal of registration

[8.1] The consequence of the Board’s decision that the registration of Allergan as applicant must be reversed now has to be considered. The LD, having decided that Allergan had been correctly registered as applicant, went on to deal with the competing requests arising out of the suspension of the grant proceedings, in the end reaching a decision not to make any order in this respect. This second part of the decision was also the subject of both appeals. In its communication sent to the parties on 15 July 2013 in preparation for the oral proceedings (OPs), the Board pointed out that if the decision on registration was wrong it would mean that the wrong parties had been before the LD and now the Board in these appeal proceedings.

[8.2] Neither party filed any response to this observation. However, during the OPs before the Board, and after the Board had announced its conclusion that the registration of Allergan as applicant had to be reversed, Allergan for the first time advanced a submission that the appeal proceedings could then and there be continued because even though Allergan was now known not to be the applicant, it was entitled under R 14(3) as an interested party to request continuation of the grant proceedings. As to the absence of Reprise from the proceedings, Allergan’s representatives said that they also represented Reprise, so that there was no obstacle to the appeal being continued on this basis.

[8.3] As to this point, the Board makes the following observations:

(a) The essential purpose of appeal proceedings is to decide whether the decision under appeal was correct. In the present case the essential issues decided by the LD and the issues which then became the subject matter in the appeal proceedings were whether the registration of Allergan as applicant should be reversed, and whether the grant proceedings should be resumed on the request of the applicant and, if so, when. Whether grant proceedings should be resumed on the application of another party, being the transferee of the application, was never an issue in the first instance proceedings. Nor until the afternoon of the OPs before the Board was it raised in the appeal proceedings.

(b) In reality, Allergan’s argument amounted to a request for the Board to exercise its discretion to allow Allergan to amend its case at a very late stage of the appeal proceedings by reconstituting the entire proceedings and continuing with the appeal on that basis (see Articles 13(1) and (3) RPBA).

(c) This request was a response to a state of affairs that had been a clear possibility for over three years, namely from 3 August 2011, the date when Ferring first filed its request to reverse the registration of Allergan as applicant […]. However, Allergan at no time took any steps to guard against this possibility by filing auxiliary requests on behalf of Reprise in the proceedings before the LD or in the appeal proceedings. That it is open to a party to guard against such procedural uncertainties is demonstrated by G 2/04:

“... it is an accepted principle in proceedings before the EPO that a party may file auxiliary requests. When used appropriately, such requests do not impede the course of proceedings. Rather, they make clear at an early stage what the fallback positions of a party are and give the adversary and the deciding body the opportunity to be prepared as soon as the respective request becomes relevant. This is the case when the preceding preferred request turns out not to be allowed by the deciding body.” (Point [3.2] of the Reasons)
“If, when filing an appeal, there is a justifiable legal uncertainty as to how the law is to be interpreted in respect of the question of who the correct party to the proceedings is, it is legitimate that the appeal is filed in the name of the person whom the person acting considers, according to his interpretation, to be the correct party, and at the same time, as an auxiliary request, in the name of a different person who might, according to another possible interpretation, also be considered the correct party to the proceedings.” (Point II of the Order)

(d) The Board would not wish to allow purely formal procedural requirements to get in the way of dealing with the substantive issues. However, the correct constitution of proceedings is not a matter of pure formality. It is important that the correct persons are parties to the proceedings so that they are bound by the decision as a matter of res judicata and can, for example, if appropriate, be made the subject of an order to pay costs. Even though Allergan’s representatives stated that they had power of attorney to act also on behalf of Reprise, no formal application in the name of Reprise to join the proceedings was made. In T 1178/04 [46] the decision was reached that the wrong parties were present in the appeal proceedings (a transfer of the opposition status was held by the Board to have been invalid), with the result that the Board felt compelled to remit the case. In T 1982/09, the factual situation was similar in that the Board decided that the opponent status had not been validly transferred but the Board nevertheless felt able to continue the appeal proceedings. But there the representative had reacted appropriately at an earlier stage of the appeal proceedings to this possibility and both parties wanted the Board to go on and decide the substantive issues. The correct opponent was “deemed to have acquired the appellant status” from the wrong opponent as a consequence of the Board having decided that the opponent status was not validly transferred (point 2.2 of the reasons). That is not the position here.

(e) All these considerations point away from allowing Allergan’s request.

[8.4] The Board is in any event not convinced by the central plank of the Allergan’s argument based on the construction of R 14(3). This states:

“Upon staying the proceedings for grant, or thereafter, the EPO may set a date on which it intends to resume the proceedings for grant, regardless of the stage reached in the national proceedings instituted under paragraph 1. It shall communicate this date to the third party, the applicant and any other party. …”

Allergan argues that since this rule refers to “the third party, the applicant and any other party” (“Beteiligte” in the German version of the rule), it must mean that any person may apply for a resumption of the grant proceedings. As to this, the opening wording of the rule (“Upon staying the proceedings for grant, or thereafter, the EPO may set a date on which it intends to resume the proceedings for grant …”) is in fact perfectly general, and indeed appears to contemplate that the EPO may act on its motion (as happened in T 146/82. The Board is not sure who is intended by the reference to “any other party” (see also the reference to “the applicant and any other party” in R 14(2)). In this the Board was not helped by the fact that Allergan’s submission came out of the blue. But it is not necessary to reach any conclusion because it does not follow from this statement about the parties who must be informed about the date of resumption of the grant proceedings that any person has the right to apply for such resumption, and certainly not in the absence of the applicant as party. It also does not mean, as Allergan argued, that the interests of a party such as Allergan (a contractual transferee of the application) will never be taken into account when considering whether to resume grant proceedings: the Board sees no reason why it should not be relevant for the EPO to take such interests into account if it becomes appropriate to weigh up the various interests. (In this respect it should be noted that Ferring reserved the right to argue that it is never appropriate to weigh up the competing interests).

[8.5] For all of these reasons, therefore, and even on the assumption that Allergan’s amendment to its case were to be admitted […], the Board refused to continue the appeal proceedings with the hearing of Allergan’s request, as a “third party”, for immediate resumption of the grant proceedings.

Referral of further questions to the EBA

[9.1] In reaction to the Board’s indication that it did not intend to continue with the appeal proceedings by hearing Allergan’s request to resume the grant proceedings, Allergan filed a request to refer two further questions to the EBA, as follows:

“Can a party other than the applicant (Beteiligter) make a R 14(3) request? 

If the answer to question 2 is no, then if a patent application is transferred during stay of proceedings for grant how are the interests of a good faith recipient of the patent application to be heard by the EPO?”

[9.2] It was said that answers to these questions were needed because a point of law of fundamental importance arose. As to the first question, the issue has arisen not only in the context of the exercise by the Board of its discretion as to the handling of the appeal proceedings but also in the particular and unusual circumstances of the case. As already pointed out, these have arisen partly because the precautionary step of filing auxiliary requests in the name of Reprise was never taken. The Board does not need the answer to such a question in order to deal with this procedural situation. The same answer can be given in relation to the second question which Allergan asks to be referred, which essentially is a rhetorical question in support of its argument on the first question. As stated above (point [8.4], at the end), the refusal to register a transferee as applicant while the proceedings are stayed does not mean that the economic interests of the transferee cannot be taken into account. It is also no undue burden for the transferor to make the transferee’s interests heard while the grant proceedings are stayed. The Board would also point out that (a) it is not the purpose of a reference under A 112(1) for the EBA to give answers to open procedural questions framed in this way and (b) the question is in any event hypothetical since the status of Allergan as “a good faith recipient of the patent application” (whatever this may mean) is not established and is clearly a matter of dispute so far as Ferring is concerned.

Order […]

 The registration of Allergan as applicant is ordered to be reversed. […]

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