T 567/10 – Half A Loaf Is Better Than None

What can be done during appeal proceedings when a claim of the opposed patent lacks novelty but novelty is not a ground for opposition, and the patent proprietor objects to it being introduced?

The headnote of G 7/95 says that

“in a case where a patent has been opposed under A 100(a) on the ground that the claims lack an inventive step in view of documents cited in the notice of opposition, the ground of lack of novelty based upon A 52(1), A 54 is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee. However, the allegation that the claims lack novelty in view of the closest prior art document may be considered in the context of deciding upon the ground of lack of inventive step”.

This decision presents us with such a case.

Claim 1 as granted (and maintained by the Opposition Division) read:

A sealed package (1) for pourable food products, having at least one removable portion (4), and a closable opening device (2) in turn comprising a frame (5) defining a pour opening (6) and fixed to said package (1) about said removable portion (4), a cap (7) fitted to said frame (5) to close said pour opening (6) and movable to free the pour opening (6), and pull-off opening means (8) housed in said frame (5) and comprising a rigid plate (9) attached to said removable portion (4) and extractable from the frame (5), by pulling action, together with at least part of said removable portion (4); characterized by also comprising a pull-tab (16) of sheet material interposed between said removable portion (4) and said plate (9) and attached to both.

[1.2.1] All figures of D1 show an opening device 1 applied on a packaging container 2 of the type which is manufactured from a continuous laminated web material, with a core of paper or paperboard to which thermoplastic layers and possibly aluminium are laminated […].

[1.2.2] In […] D1 it is further stated that

“[o]n the upper side of the packaging container 2, a hole 3 or a hole indication has been made. This hole 3 or hole indication is normally covered from beneath by a thermoplastic strip for purposes of realising a liquid-tight package. At the same time, the outer side of the package is provided with a corresponding outer strip 4. Normally, these work stages are already carried out on production of the packaging material and the packaging material is delivered ready to the filling machines, provided with the above described hole 3 with each respective covering strip”.

[1.2.3] The above-mentioned passage of D1 defines that when the packaging material is delivered to the filling machines the hole 3 is already provided with an inner thermoplastic strip covering said hole 3 from the inside and with an outer strip 4 covering said hole 3 from the outside. This means that the two strips have to be fixed to each other so that when pull is exerted on the outer strip 4 in order to unseal the hole 3 said outer strip 4 detaches from the outside of the packaging material removing at the same time the thermoplastic strip covering the hole 3 on the inside. Otherwise an additional tearing action for the lower thermoplastic strip would be needed for freeing the hole 3, which is nowhere described in D1 and would not make any sense.

[1.2.4] The outer strip 4 further has a free unsealed portion 5 which is attached to the surface area 11 of the heel 10, see column 3, lines 8 to 11 and column 4, lines 10 to 30. Through this attachment the inner thermoplastic strip covering the hole 3 on the inside is connected via the free unsealed portion 5 and the outer strip 4 to the surface area 11 of the heel 10. In the closed stage shown in figure 9 the surface area 11 of the heel 10 is positioned within the space defined by the pouring element/frame 7.

In the nearly complete opening stage shown in figures 11 and 12 the heel 10 is extracted from the element/frame 7 with the main portion of the strip 4, obviously together with the main portion of the inner thermoplastic strip attached to it.

[1.2.5] Accordingly, D1 discloses in its embodiment shown in figures 8 to 12 (using the terminology of claim 1 of the patent in suit) a sealed package (packaging container 2 and opening arrangement 1) for pourable food products, having at least one removable portion (the thermoplastic strip covering the hole 3 from the inside), and a closable opening device (1) in turn comprising a frame (7) defining a pour opening and fixed to said package about said removable portion, a cap (9) fitted to said frame to close said pour opening and movable to free the pour opening, and pull-off opening means (10) housed in said frame and comprising a rigid plate (11) attached to said removable portion and extractable from the frame by pulling action, together with at least part of said removable portion, and also comprising a pull-tab (4,5) of sheet material interposed between said removable portion and said plate and attached to both.

[1.2.6] The Board cannot follow the [patent proprietor’s] arguments, that since

a) in claim 1 of the main request the pull-off opening means is listed as an element of the opening device in addition to the frame and the cap,

b) the whole disclosure of the patent in suit only refers to solutions having the pull-off opening means separate from the cap, and

c) the description does not contain any information hinting that the cap and the rigid plate of the pull-off opening means could be incorporated into one single structural element,

the person skilled in the art would not understand the subject-matter of claim 1 of the main request to be also encompassing a solution having the rigid plate as an integral part of the cap, for the following reasons.

[1.2.7] Neither claim 1 of the main request nor the description of the patent in suit excludes the pull-off opening means being part of the cap. Moreover, the fact that in claim 1 the pull-off opening means, the frame and the cap are listed as three distinct elements does not exclude that these elements may be interconnected with each other or even that they may be integral with each other. Only the specific embodiment depicted in the figures shows specific pull-off opening means 8 being non-integral with the cap. This, however, cannot have a limiting effect as far as it concerns the pull-off opening means claimed in claim 1.

[1.2.8] Since according to point [1.2.5] above the sealed package according to the embodiment of D1 shown in its figures 8 to 12 discloses all the features of the sealed package of claim 1, the sealed package according to claim 1 cannot involve an inventive step.

[1.2.9] The Board has to take recourse to the above unusual formulation since the original opposition was only based on the ground of opposition of lack of inventive step based on D1 with application of the teaching of D2 being obvious. In application of decision G 7/95 [7.2], the Board had to decide the question whether D1 is disclosing or not all the features of claim 1 as a question of inventive step, since the [patent proprietor] did not give its consent to the introduction of the ground of lack of novelty, raised by the [opponent] for the first time on appeal.

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The file wrapper can be found here.

T 1544/08 – A Colourful Decision

This is an appeal of the opponent against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form.  

In its statement of grounds of appeal, the opponent requested the Board to admit document A3, which the OD had refused to admit. About two months before the oral proceedings (OPs) before the Board, it also requested the admission of document D12.

The board decided not to admit these documents into the proceedings:

[2.1] In the decision under appeal the OD decided not to admit the document A3 into the procedure, this document having been filed by the […] opponent only in his letter of 10th March 2008 (in reply to the summons to OPs).

[2.1.1] The reason for this decision was that the document was not prima facie relevant, in particular because the element 11a as depicted in Fig. 1 of that document was part of the bus bar 11, so could not be considered to correspond to the conductive band of the claims of the patent in suit, and because this had the consequence that the region between that part of the bus bar and the coating layer 15 could not be considered to correspond to the data transmission window of the claims of the patent in suit.

[2.1.2] During the appeal procedure the [opponent] has merely repeated that in his opinion the element 11a of A3 could be considered as a conductive band within the meaning of the patent, and that the document should be admitted into the procedure because it is prima facie relevant, in particular because it was cited in the patent in suit.

[2.1.3] The board does not consider that the fact that a document is mentioned in the patent in suit means that it can automatically be considered to be prima facie relevant. Given that the remainder of the [opponent’s] comments in this context are only repetitions of his submissions before the OD, the board sees no reason to go against the decision of the division not to admit document A3 into the procedure. Therefore the objections of lack of novelty and lack of inventive step raised by the [opponent] on the basis of this document during the procedure before the OD and maintained in the appeal procedure are of no relevance for the present decision.

[2.2] With his letter of 14^th September 2012 the [opponent] filed, in support of his objection under A 100(b), modelling results to which he gave the document number D12. The [patent proprietor] requested that this document not be admitted into the procedure.

[2.2.1] In his letter of 14th September 2012 the [opponent] stated that the results presented in this document had been produced on 18th January 2010, but that they had not been filed at that stage of the procedure because of concerns that they might provide technical information which would have been of use to competitors. In the meantime these concerns had become less significant, in which respect the [opponent] referred to the commercialisation by them of a product under the name “ClimaCoat” from December 2011.

[2.2.2] The board is of the opinion that a purely commercial consideration as indicated above cannot represent a valid reason for not complying with the requirement of Article 12(2) RPBA that the grounds of appeal should contain the [opponent’s] complete case. The board notes also that the filing of these modelling results only slightly more than two months before the OPs, and not (for instance) sooner after the start of commercialisation of the [opponent’s] product, gave the [patent proprietor] little time to carry out modelling in response to these submissions. The board also agrees with the [patent proprietor] that it should have been possible for the [opponent] to select parameters for the modelling which were unrelated to their product so as to avoid the competition issues. The board therefore considers it appropriate to make use of its discretion under Article 13(1) and (3) RPBA to not admit document D12 into the procedure.

The Board then dismissed the objection that the invention was insufficiently disclosed and went on to discuss compliance with A 100(c) and A 123(2):

[4.1] The [opponent] has objected that the figures of the patent as granted have no basis in the application as originally filed, and has also objected to the amendment to the scale of Fig. 1 which was carried out by the [patent proprietor] (proprietor) during the procedure before the OD (i.e. in the amended figure filed with the letter of 18th March 2008).

[4.2] The figures of the patent as granted were filed by the then applicant with letter of 14th January 2004, in response to an objection raised by the examiner relating to the quality of the figures then on file. In order to examine whether these figures meet the requirements of A 123(2), it is first necessary to establish which figures they should be compared with. In this context the board notes that in addition to the figures as granted, in which the different temperature ranges are indicated in black and white by different patterns of shading, hatching etc., a number of other versions of the figures are presently on file:

(a) the figures of the published international application WO 00/72635, which are also in black and white, but in which the temperatures ranges are indicated by different shades of grey;

(b) a set of colour figures which were filed with the proprietor’s response to the grounds of opposition (letter dated 31st March 2006); and

(c) a further set of colour figures filed with the [patent proprietor’s] letter of 18th March 2009.

[4.3] The [opponent] has disputed that the figures were originally filed in colour. In this context the board notes that the letter from the EPO formalities officer which accompanied the [patent proprietor’s] submission of 18th March 2009 indicates that the colour figures annexed to that letter were as originally filed, that the board’s own internal enquiries have confirmed that this was the case, and that the description of the application relating to Fig. 1 states that it is in colour (see page 2, lines 11 and 12). The board therefore sees no reason to doubt the [patent proprietor’s] statements that the figures were originally filed in colour, in particular the statement in section I.2 of the proprietor’s letter of 31st March 2006 confirming that the colour drawings filed with that letter were a copy of the drawings as filed. As noted by the [patent proprietor], this letter was signed by Guy Farmer, one of the European Patent Attorneys who also signed the cover letter of the original international application […].

[4.3.1] The [opponent’s] argument that the word “colour” in the application could refer to shades of grey in a black and white figure is not found convincing, because in the view of the board that does not represent the normal meaning of this word. Concerning the apparent discrepancy between the date on the figures filed with the [patent proprietor’s] letter of 18th March 2009 and the filing date of the application, see paragraph [4.5.1(ii)] below.

[4.3.2] The [opponent] has also argued that since the objection to the quality of the drawings in section VII. 2 of the International Preliminary Examination Report (IPER) stated that they were “too dark”, this had to be understood as meaning that they were in black and white, not in colour. The board understands however that this reflects the internal practice of the EPO to provide the examiner not with the original documents of the application, but instead with a black and white copy. Thus, the expression “too dark” used by the examiner could be understood as meaning that the black and white copy of the figures in his file was of such limited contrast that the different areas in those figures could not be distinguished from one another.

[4.3.3] Hence, taking into account the evidence on file as indicated in paragraph 4.3 above, the board concludes that the use of the expression “too dark” in the IPER is not evidence that the originally filed figures were in black and white.

[4.4] The [opponent] has moreover argued that even if the figures were originally filed by the then applicant in colour, these cannot form the basis for the comparison required under A 123(2) for two reasons.

[4.4.1] The [opponent] has firstly argued that the colour figures could not be considered as being the originally filed figures of the application because the filing of colour figures is not allowed under either the PCT or the EPC. In this respect he has referred to an excerpt from the PCT Newsletter of March 2011 […] and to the Guidelines for Examination in the EPO, sections A-X, 1.2 and 7.1 (this numbering reflecting the version of the Guidelines which was in force at the time of filing the application, not the current version, in which these provisions appear essentially unchanged in chapter A-IX).

[4.4.2] The board does not find this argumentation convincing, because according to both the PCT and the EPC the filing of colour figures in the original application is merely a formal deficiency which can be remedied on invitation. Specifically, under the PCT this is a formal deficiency under Article 14(1)(a)(v) in combination with Rule 11.13(a), which can be remedied upon invitation under Article 14(1)(b). Similarly under EPC 1973 (as in force at the time of filing of the original application and of the replacement figures) this was a formal deficiency under R 32(2)(a) in combination with R 40, which could be remedied upon invitation under R 41.

[4.4.3] The second reason given by the [opponent] as to why the colour figures should not form the basis of the comparison required under A 123(2) is based on the argument that no information concerning colour figures is available to the public. Specifically the [opponent] has noted that the European Patent Register and the electronic file to which it is linked contain only black and white figures, and contain no indication that the figures were originally filed in colour, let alone information as to what the content of those figures was. On this basis the [opponent] argued that the rights of third parties can only be satisfied if it is assumed that the originally filed figures are those available to the public, i.e. the black and white figures of the published application.

[4.4.4] However, the board cannot agree with this conclusion, because A 123(2) refers explicitly to “the content of the application as filed”, an expression which leaves no room for interpretation. Thus, if the figures of the originally filed application were in colour, it is these figures which must be used as the basis for determining whether subsequently filed figures contain added subject-matter within the meaning of that Article.

[4.5] The board thus concludes that in order to assess whether the redrawn figures as in the [patent proprietor’s] main request contain added subject-matter within the meaning of A 123(2) it is necessary to compare their content with that of the (colour) figures as originally filed. However, owing to the exceptional circumstances of the present case, no original copy of those figures is available to the board. It is therefore necessary to establish what evidence concerning their content is available.

[4.5.1] Before considering that evidence in detail, the board considers it to be useful to establish the relevant procedures on filing of a PCT application, since this is pertinent to the provenance of the different sets of figures listed as (a), (b) and (c) in paragraph 4.2 above (which designations will be used in the remainder of this discussion). The regulations covering the filing of a PCT application at the date of the filing required that three copies of the application documents be filed. That this was done in the present case is apparent from the copy of the covering letter dated 27th April 2000 filed by the [patent proprietor] […]. These three copies are then processed as follows:

(i) one is retained by the PCT Receiving Office, in this case the EPO. Enquiries carried out both by the [patent proprietor] and by the board with the relevant section of the EPO have established that this copy is no longer available.

(ii) the second copy of the application is forwarded to the International Search Authority (ISA), in this case also the EPO. The board is satisfied on the basis of its internal enquiries that the copy of the figures which was sent by the EPO formalities officer to the [patent proprietor] with letter dated 5th March 2009, a copy of which was then filed by the [patent proprietor] with his letter of 18th March 2009, is a copy of that set of figures. The board is also satisfied that the date stamped on those figures (29th May 2000) is the date on which they were received, as part of the “search copy” by the section of the EPO acting as ISA from the section of the EPO acting as Receiving Office, thus explaining the discrepancy between this date and the recorded filing date of the application (1st May 2000), and that both this date stamp and the file number on these figures were applied by the EPO.

(iii) the third copy is forwarded to the International Bureau (IB), and therefore it can be assumed that this copy formed the basis of international publication WO 00/72635.

[4.5.2] It is thus apparent that each of the three sets of figures identified in paragraph 4.2 above is a copy of figures related to the originally filed figures, the set (a) in the international publication being a black and white copy of the figures forwarded to the IB, the set (b) filed by the [patent proprietor] (proprietor) with his letter of 31st March 2006 being a copy derived from the figures used for the original filing, and the set (c) filed by the [opponent] with his letter of 18th March 2009 being a copy derived from the figures forwarded to the ISA. Given that any copying process can be assumed to result in a loss of information to a greater or lesser extent, the board considers it to be appropriate to compare these three sets of figures to discover whether it can be determined consistently that one of these sets contains the most information, and that the other two sets contain only information contained in that one set, on which basis it would then be logical to assume that the originally filed figures contained at least the information in that one set.

[4.5.3] Such a comparison was carried out in detail during the OPs before the board. The result of this comparison is that sets (a) and (c) contain different, and not completely overlapping amounts of information, but that all of the information in each of these two sets is present in set (b). For example, considering the areas with temperature between 10 and 20°C in the bottom corners of Fig. 1, these can be seen very clearly in set (b), reasonably clearly in set (a), and barely at all in set (c). On the other hand the area with temperature between 20 and 30°C at the top of the same figure, which can also be seen very clearly in set (b), can also be seen reasonably clearly in set (c) but is barely discernible in set (a). On this basis it could be concluded that set (b) contains the most information. A similar conclusion can be reached on the basis of the boundaries at 30°C and 40°C towards the top corners of Fig. 2, the former of which can be seen in set (a), the latter in set (c), and both in set (b). Consideration of the other figures did not lead to any information being identified which was present in either or both of sets (a) and (c) but which was not present in set (b). The board thus concludes that in order to assess whether the redrawn figures in the patent as maintained by the OD contain subject-matter extending beyond the content of the patent as filed, it would suffice if it could be determined that these figures contain no information extending beyond the content of the figures designated as set (b). The board also notes that this conclusion is not rendered invalid by the possibility that some teaching in that set of figures cannot be unambiguously derived from either set (a) or set (c), since it cannot be excluded that certain information has been lost during the copying process for both of these sets.

[4.5.4] No difference in teaching between the figures designated as set (b) and the figures of the patent as maintained by the OD (i.e. the patent according to the [patent proprietor’s] main request) has been identified. The only difference in appearance is in the scale of Fig. 1, which was amended during the procedure before the OD (amended figure filed with proprietor’s letter of 11th March 2008). From a comparison of the amended figure with the colour figure of set (b) it is clear that the only difference is the omission from the scale of those blocks corresponding to temperature ranges which do not appear in the depicted modelling results. This omission thus does not result in any change to the technical teaching of the figure. Therefore the board concludes that the figures of the patent according to the [patent proprietor’s] main request do not contravene A 123(2).

[4.5.5] The [opponent] has argued that the OD committed an error in deciding to allow the amendment to the scale of Fig. 1 as a correction under R 139. The board agrees that the OD should not have allowed this amendment under that rule, since the figures referred to in the decision to grant form an integral part of that decision. However, the board also considers that this erroneous choice of the legal basis has no substantive impact on the final decision taken by the OD because, as indicated above, the modification of the scale of the figure does not contravene A 123(2). Moreover, the board regards it as an amendment which is admissible in opposition proceedings pursuant to R 80.

The Board also found the remaining A 123(2) objections not to be persuasive and decided that the main request could be allowed. It then dealt with objections under R 106 filed by the opponent:

[10.1] During the course of the OPs of 16th November 2012 the [opponent] filed two objections under R 106 […].

[10.2] According to the [opponent’s] first objection under R 106 the board had committed a substantial procedural violation in “deciding” that the figures of the application as originally filed were those filed by the [patent proprietor] (then opponent) with the letter of 31^st March 2006.

[10.2.1] As a preliminary point, the board emphasises that no “decision” as such was taken by the board concerning that specific question, contrary to the assumption obviously underlying the [opponent’s] objection. Rather, the board expressed its opinion without even having closed the debate on this issue.

[10.2.2] The board understands the objection in the sense that the essence of the [opponent’s] objection to the procedure lies in the assertion that the [opponent] was taken by surprise by the board’s “decision”. In this respect, the board considers it important to note that the question as to whether the figures of the application as originally filed were in colour or black and white had been discussed extensively in the parties’ written submissions during the appeal procedure, and that the board itself had pointed out in the communication accompanying the summons to OPs […] that clarification of this issue was necessary before a decision could be reached on the [opponent’s] objections under A 100(c). Thus, the fact that there was a need to reach a conclusion on this topic during the OPs must have been clear to the parties.

[10.2.3] When discussing this objection under R 106 during the OPs it became apparent to the board that a misunderstanding had arisen, in particular with respect to the fact that the opinion expressed by the board before the filing of the objection was not that these figures were those originally filed, but rather that these were considered as providing the most reliable evidence regarding the content of the originally filed figures. Therefore, in order to remedy this obvious misunderstanding, during the OPs the board further explained the previously expressed opinion, and in particular the general purpose of the assessment of the evidence on file. In view of these considerations, the board gave the parties a further opportunity to discuss the issue of what was the content of the originally filed drawings and to present their evaluation of the evidence on file. The subsequent discussion dealt in particular with the topics summarised in paragraphs [4.5.2-3] above. Following this discussion the board indicated that it considered that the procedural objections raised by the [opponent] in his first objection under R 106 had been overcome.

[10.3] According to the [opponent’s] second objection under R 106 the board had committed a substantial procedural violation in deciding on the issue of sufficiency of disclosure before deciding on the question as to which figures constituted those of the application as filed.

[10.3.1] The board decided to dismiss this objection, because the decision concerning sufficiency of disclosure within the meaning of A 100(b) concerned the patent, not the application, so that the only figures which were of relevance to that decision were those of the patent as granted and Fig. 1 as amended during the procedure before the OD. The question as to which figures were filed as part of the original application was relevant for the ground of opposition under A 100(c), but not for the question of sufficiency of disclosure of the patent, so that the fact that the decision on the latter question was reached only after that on the former cannot constitute a fundamental procedural defect within the meaning of A 112a.

[10.3.2] In addition, the board notes that it came to the conclusion that the figures of the [patent proprietor’s] main request do not contravene A 123(2) (see point [4.5.4] above), so that the question as to the order in which these two grounds were discussed could not in any case have had any impact on the issue of sufficiency of disclosure.

[10.3.3] The board notes also that at the beginning of the OPs of 16th November 2012 both parties had agreed to the suggestion of the board to discuss the issue of sufficiency of disclosure before the other substantive issues.

NB: The Board provided the following headnotes:

1. In some circumstances it can be appropriate to respond to an objection raised under R 106 during OPs before a board of appeal by (re-)opening the discussion of the issue in question (see point [10.2] of the reasons).

2. The wish to avoid giving commercially valuable information to competitors is not necessarily a valid reason for not complying with the requirement of Article 12(2) RPBA (see point [2.2] of the reasons).

3. If drawings are originally filed in colour at the date of filing of an application, then the technical content of these original colour drawings should be determined taking into account the available evidence when establishing the content of the application as filed for the purpose of examining compliance of amendments with A 123(2) (see points [4.4-5] of the reasons).

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The file wrapper can be found here.

J 3/12 – Carte Blanche

The Euro-PCT application under consideration entered the European phase on September 11, 2006.

The renewal fee for the third year which fell due on March 31, 2007, was not paid. On May 4, 2007, a notice drawing attention to A 86(2) EPC 1973 was sent to the appointed European representative. On November 12, 2007, a communication under R 69(1) EPC 1973 was issued informing the applicant that the application was deemed to be withdrawn under A 86(3) EPC 1973.

On January 14, 2008, a request for re-establishment of rights was filed. On the same day the fee for re-establishment as well as the renewal fee for the third year together with the additional fee were paid. The applicant submitted that Microsoft Corporation had acquired the applicant company shortly before entering the regional phase before the EPO. It only became aware of the non-payment of the renewal fee by the communication of 12 November 2007. The European representative did not pay the renewal fee on entry into the European phase because at that time the fee had not yet become due and because, as a standing rule, any annuity fees on behalf of Microsoft were paid by CPA. It was difficult to establish what exactly prevented this application from being communicated in the proper way to CPA to secure timely payment for the annuity fee for the third year. At least, part of the reason was due to severe problems with a third party software tool, called Anaqua, that was used for communicating new cases for annuity payment from Microsoft to CPA. Investigations had shown that the present case had never been included in any of the lists communicated to CPA for annuity payment. The EPO reminder of 4 May 2007 had been forwarded to the responsible US law firm which forwarded this letter to the in-house Microsoft patent team. It was difficult to trace what exactly prevented a detailed review of the case. It appeared that the annuity reminder was uploaded by the US law firm into Anaqua but the annuity reminder was, for unknown reasons, not brought to the attention of the responsible person for handling annuity payments, Ms Sharon Rydberg at Microsoft.

On May 9, 2008, the Receiving Section issued a communication informing the applicant that no details had been presented to show that a normally satisfactory system was in place and that all due care had been observed.

By reply dated July 17, 2008, the applicant maintained that it had fully relied on the proper working of the internal data base Anaqua. It had only recently turned out that certain data in this system was incorrect. It was not possible to fully understand or know the reasons why. The applicant had to fully rely on the mentioned software tools, as the workload could not be managed otherwise. The applicant had built up a very large, worldwide patent portfolio in a very short period of time. Thus, from the beginning, the applicant relied on software tools to manage the workload which was overwhelming due to the high speed with which the portfolio increased worldwide. Once software tools were used, one had to rely on its correct operation, otherwise there was no sense in introducing them.

By decision dated September 2, 2011 (!), the Receiving Section refused the request for re-establishment. The decision was mainly based on the fact that it had not been sufficiently demonstrated that there was a normally satisfactory system in place for paying the renewal fee.

The applicant filed an appeal.

The Board found the appeal to be admissible and A 122 and R 136 EPC 2000 to be applicable. The request for re-establishment was found admissible, too. The Board then examined its allowability:

[4] According to A 122(1), an applicant can have his rights re-established, if in spite of all due care required by the circumstances having been taken, he was unable to observe the time limit. Under the established case law of the Boards of Appeal, an isolated mistake within a normally satisfactory system is excusable. To this end, the applicant or his representative must plausibly show that there was a normally effective system in place for monitoring time limits and that the non-observance of the time limit was due to an isolated mistake.

[5] In the present case, the appellant has not explained how the Anaqua software system which was used to administer all patent data and which calculated the due dates for the renewal fees worked. No details were given about which data was entered into the system, by whom or on which basis Anaqua performed the calculation of the due dates. It was neither made clear which data was transmitted to CPA nor how Anaqua worked at all. Thus, on the basis of the individual circumstances the Board is not in the position to judge whether the system was satisfactory. Nor can it judge whether, in the given situation, an isolated mistake was made, or whether the mistake was immanent to the system. The applicant conceded that the data in Anaqua was wrong but did not explain why. Thus, the individual circumstances remain in the dark.

[6] The appellant argued that it was not necessary to present and prove the individual circumstances and details as to why the individual mistake happened, if it exists another way to convincingly demonstrate that there was a satisfactory system in place. In a situation as present, where a huge amount of data is to be administered which can only reasonably be done by the use of software tools, it was sufficient to show that a system was in place which generally worked properly. The fact that very few mistakes occurred, taking into account the amount of data managed, was sufficient proof that a satisfactory system was implemented.

The Board cannot share this view. According to the established case law of the Boards of Appeal, the circumstances of each case must be looked at as a whole. The obligation to exercise due care must be considered in the light of the situation as it stood before the time limit expired. The steps the party took to comply with the time limit are to be assessed solely on the basis of the circumstances applying at that time (see references in Case Law, 6^th edition 2010, VI.E.7.3.1). If a request for re-establishment is based on an isolated mistake the appellant must plausibly show that there was a normally satisfactory system established at the relevant time in the office in question (Case Law, 6^th edition 2010, VI.E.7.3.3 a), J 13/07 [5.1]).

From this it follows that the individual circumstances of the case must be assessed, i.e. how Anaqua worked and how it was handled in 2007 with Microsoft in order to ensure timely payment of the renewal fee. It is not sufficient to refer in general terms to Anaqua as being a well established software without giving the details as to how it works and how it was handled in the specific case, because otherwise it cannot be judged whether it was an isolated mistake, or a general failure of the system.

A system should be organised in such a way that no mistakes happen and only when it is demonstrated that the mistake was an isolated one re-establishment can be allowed. It cannot be accepted that it is sufficient to argue that a proper system has been installed once and further not to have to demonstrate how it was handled on the mere assumption that a few mistakes would be acceptable. This would go against what all due care requires. To this regard, the details how the system worked must be submitted and proven. This encompasses the data entry. The best software system is of no use if incorrect data are entered at the beginning. In the present case, the mistake resulted from wrong data in Anaqua. If an applicant relies on a database system he must make sure that it is fed with the correct data. The more an applicant relies on a software system for monitoring procedural aspects concerning his patent applications or portfolio, the more he must make sure that the data on which the system performs its calculations is correct. In the present case, it has not been shown at all that there was a satisfactory procedure in place for entering and cross checking the relevant data. Thus, the monitoring system has not been sufficiently described, nor has any evidence been furnished. Moreover, it seems that it was not just an isolated mistake which happened, as is shown by cases J 4/12 and J 23/10 which have the same underlying facts.

[7] If the appellant’s argument were accepted this would mean giving a “carte blanche” to applicants who administer a large amount of patent applications and who apply generally accepted systems. It would not be clear where the limits of all due care lie, because it would be difficult to draw a line how many mistakes could be accepted without loss of rights. This would not be in line with the wording of A 122(1) which stipulates that all due care required by the circumstances has to be shown. This means in the individual situation, not just in general.

[8] The Board cannot see how the jurisprudence, cited by the appellant, concerning the proof of prior use of mass products or public availability of commercial brochures could be applied here. It might well be that the monitoring of time limits of a huge patent portfolio is somehow a mass business, nevertheless A 122(1) requires that the individual circumstances of the case have to be explained and proven. The principle of balance of probabilities only affects the standard of proof but does not release the applicant from his obligation to submit the necessary facts.

[9] Moreover, even after expiry of the due date, the appellant could still have paid the renewal fee together with an additional fee. Once a reminder to this regard is received, all due care requires that the applicant checks whether the non-payment was intentional or not. It cannot be assumed that everything is correct, simply because the software normally works correctly. These reminders serve as a safety-net if a mistake happens. Apparently, the EPO reminder was uploaded into Anaqua by the US attorney, but nothing happened. As admitted by the appellant this was Ms Rydberg’s fault, since she did not perform her duties correctly. Again, no details were presented as to why and thus it has not been established that all due care in respect of the additional period has been observed. Thus, re-establishment of rights must already fail for this reason. […]

The appeal is dismissed.

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There is also a parallel decision: J 4/12.

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T 459/09 – Freeze! Or I’ll Shoot

To say it in patent language: as soon as you amend, your claims come under full A 84 scrutiny, even if you are only combining granted claims. There have been decisions of that kind in the past, but the present decision appears to be more reckless than what we have seen so far.

The patent proprietor filed an appeal against the decision of the Opposition Division (OD) to revoke the patent.

Before discussing the allowability of some requests admitted under Article 13 RPBA, the Board had to examine whether it was competent to examine the clarity of claims that only combined claims as granted.

[4.1.1] The appellant disputed that clarity issues could be dealt with in opposition appeal proceedings in cases such as the present one, in which the changes made to the claims of the main request and the first auxiliary request only consisted in the combination of claims 1 and 14 of the patent as granted.

In particular, the appellant argued that since the requirement of clarity was not a ground of opposition, none of the claims of a patent as granted could be attacked under A 84 with the notice of opposition. For this reason, non-compliance with A 84 could not be objected to either in later stages of the proceedings with respect to a combination of claims of the patent as granted.

[4.1.2] It is generally accepted that the list of grounds for opposition according to A 100 is exhaustive. This means that objections under A 84 cannot be raised against a granted patent even though they are manifest.

[4.1.3] The situation is different in case of the maintenance of a patent in amended form.

A 101(3) requires that if an OD (or a Board of appeal (A 111(1), second sentence, first alternative)) is of the opinion that, taking into consideration the amendments made by the proprietor of the European patent during opposition proceedings, “the patent and the invention to which it relates meet the requirements of the EPC”, it shall decide to maintain the patent as amended, provided that the conditions laid down in the Implementing Regulations are fulfilled. If the patent and the invention to which it relates do not meet the requirements of the EPC, it shall revoke the patent.

This Article apparently establishes a deviation from the framework of A 100 in that the power to examine a patent in amended form is not restricted to the grounds for opposition.

In decision G 9/91 [19], the Enlarged Board of Appeal confirmed that in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, «such amendments are to be fully examined as to their compatibility with the requirements of the EPC».

[4.1.4] However, according to the jurisprudence of the boards of appeal, there are limits to the competence accorded by A 101(3) as regards the examination of an amended patent.

For example, A 101(3) would not justify objections to be based upon A 84, if such objections did not arise out of the amendments made (see T 301/87 [headnote 1; 3.7]). Along this line, an objection of lack of clarity should not be raised for instance with respect to an unclear feature comprised in an independent claim of a patent as granted, if this claim is amended by way of addition of a new, clear feature, provided that both features are unrelated.

Boards of appeal have also perceived a limit in the particular case in which an independent claim of a granted patent is amended simply by combining it with an associated dependent claim.

In particular, in T 1855/07 [2], referring to existing jurisprudence (see T 367/96; T 301/87; T 472/88; T 362/02 (NB: this should read T 326/02); T 381/02), the board held that the power to examine clarity under A 84 failed when the amendment merely consisted in the literal inclusion of dependent claims into the associated independent claim of a patent as granted (“satzbauliche Eingliederung”). The board noted that the jurisprudence to which it referred made a distinction between substantial amendments, which under A 101(3) (A 102(3) EPC 1973) were to be fully examined as to their compatibility with the requirements of the EPC, and merely formal amendments arising from simple linguistic combinations of granted claims, for which the framework of A 100 applied.

[4.1.5] However, the jurisprudence of the boards of appeal comprises also examples in which combinations of claims of a granted patent were considered to constitute substantial amendments, which justified an examination under A 84.

In T 1459/05 [4.3] the board decided not to adopt the existing jurisprudence, according to which there was no power to examine matters of clarity under A 84 when the amendment consisted of a combination of claims as granted. The board found that an exception had to be made in the case before it because the assessment of the resulting claimed subject-matter decisively depended on the technical significance of the sole added feature in that any difference from the prior art could only be defined on the basis of that feature. However, its technical significance was so unclear for the skilled person that any such difference was not apparent or at least could not be identified with a reasonable degree of certainty. The board held that it had to be able to exercise its discretion and to deviate, exceptionally and on a case-by-case basis, from the practice of ruling out any power of examination under A 84 in the case of amendments consisting of a combination of claims as granted. In particular, such discretion had to be exercised where a strict application of the approach which excluded the raising of an objection on the grounds of lack of clarity would lead to a situation in which a further examination of the amended patent, e.g. in relation to novelty and inventive step, would be impeded or might not even lead to a meaningful result.

In T 1440/08 [4] the board also held that it had the power to examine an amendment under A 84 in line with other decisions of the existing jurisprudence (see T 472/88; T 420/00; T 681/00), in particular when the combination of granted claims led to an inconsistency between two features of the amended claim 1. Irrespective of the fact that the clarity problem had already affected the claims of the patent as granted, it was the change of perspective on the invention due to the amendment by which the clarity problem became apparent.

[4.1.6] In view of the foregoing, the present Board holds that clarity of an amended independent claim should, in principle, be examined, even if the amendment only consists in a mere literal combination of claims of the patent as granted. Any other approach would indeed entail the risk of unduly restricting the mandate for examination of an amended patent which A 101(3) imposes on an OD having to deal with an amended patent.

In fact, the wording of A 101(3) qualifies neither the nature nor the scope of the amendments. After amendment of any kind, the OD may no longer decide to reject the opposition, as would have been possible, had, for example, a clarity objection been raised as the sole ground for opposition. Instead, the OD may only decide either to maintain the patent in amended form or to revoke the patent. Their decision is taken on the basis of whether the patent and the invention to which it relates meet the requirements of the EPC. A 101(3) indeed defines in absolute terms that the requirements of the EPC shall be considered when amendments are made by the proprietor of the patent during opposition proceedings. Therefore, the term “amendments” in A 101(3) should not be construed narrowly and, irrespective of the manner in which the patent is modified, the amended patent should be subjected to an examination to ensure compliance with all requirements of the EPC. This approach is in agreement with G 9/91 […].

[4.1.7] In this context, the Board notes that an amendment consisting of the incorporation of a technically meaningful feature in an independent claim of a granted patent does indeed represent an attempt to overcome an objection within the framework of A 100 against the patent as granted, the amendment having to be occasioned by a ground for opposition (R 80). It follows that such an amendment is of a substantial nature and will normally have an effect on the substantive examination, such as for example on the assessment of novelty and inventive step.

In the Board’s opinion, any amendment that can be qualified as being of a substantial nature in the above sense would in principle justify an unrestricted exercise of the examination power derivable from A 101(3), irrespective of the kind of amendment performed. Specifically, it is immaterial whether the amendment arises from the combination of a feature from the description with an independent claim, or from the literal combination of claims of the granted patent.

The amended patent would thus normally be examined pursuant to A 101(3) so as to establish whether it meets all the requirements of the EPC. A deviation from this rule may, however, not be excluded in particular cases. This has to be judged on a case-by-case basis.

[4.1.8] In the present case, with regard to the appellant’s main request, first auxiliary request and third auxiliary request, the introduction of the additional feature of dependent claim 14 into claim 1 of the patent as granted highlights the significance of a specific technical concept, i.e. the capability of the interlaced antenna array for operation in three specific bands. This amendment is of a substantial nature.

In view of the foregoing, the Boards holds that it has the power to examine whether the amended patent meets the requirements of A 84 EPC 1973.

The Board has also provided headnotes:

I. An amendment consisting of the incorporation of a technically meaningful feature in an independent claim of a granted patent does indeed represent an attempt to overcome an objection within the framework of A 100 against the patent as granted, the amendment having to be occasioned by a ground for opposition (R 80). It follows that such an amendment is of a substantial nature and will normally have an effect on the substantive examination, such as for example on the assessment of novelty and inventive step.

II. Any amendment that can be qualified as being of a substantial nature in the above sense would in principle justify an unrestricted exercise of the examination power derivable from A 101(3), irrespective of the kind of amendment performed. Specifically, it is immaterial whether the amendment arises from the combination of a feature from the description with an independent claim, or from the literal combination of claims of the granted patent.

III. The amended patent would thus normally be examined pursuant to A 101(3) so as to establish whether it meets all the requirements of the EPC. A deviation from this rule may, however, not be excluded in particular cases. This has to be judged on a case-by-case basis (see [4.1.7]).

In my understanding, until now an A 84 assessment of mere combinations of granted claims was only accepted in exceptional cases, whereas the present decision turns the tables and tells us that only in exceptional cases such an assessment should not be carried out. 

Now that we have so clear a statement that appears to contradict earlier case law (possibly relegated to point III of the headnotes), perhaps would it be a good idea to ask the Enlarged Board to clarify the situation once and for all, for the sake of legal security.

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T 713/08 – Too Select

The present examination appeal decision is not surprising at all, but it nicely demonstrates the – rather strict – way in which A 123(2) is applied by the EPO nowadays.

Claims 1, 12, 13, 26, and 27 as filed read (my emphasis):

1. A method for modulating the activity of at least one neurotrophin and/or a pro-neurotrophin in a cell or an organism, such as an animal, comprising administering to said animal a sufficient amount of an agent capable of

(i) binding to a receptor of the Vpsl0p-domain receptor family and/or

(ii) interfering with binding between a receptor of the Vpsl0p-domain receptor family and a neurotrophin and/or proneurotrophin and/or

(iii) modulating the expression of a receptor of the Vpsl0p-domain receptor family.

12. The method according to any of the preceding claims, wherein the agent is selected from proteins, peptides, polypeptides, antibodies, antisense RNA, antisense-DNA or organic molecules, SiRNA.

13. The method according to any of the preceding claims, wherein the agent is capable of inhibiting binding of said neurotrophin or said pro-neurotrophin to the receptor.

26. A method for treating a disease or disorder in an individual, comprising administering to said individual a sufficient amount of an agent as defined in any of the claims 1-25.

27. The method according to claim 26, wherein the disease or disorder is selected from one or more of the following diseases or disorders: inflammatory pain, diseases or disorders of pancreas, kidney disorders, lung disorders, cardiovascular disorders, various types of tumours, psychiatric disorders or neuronal disorders.

Claim 1 of the main request before the Board read:

Use of an agent capable of inhibiting the binding of a proneurotrophin to a Vpsl0p-domain receptor by binding to an extracellular part of the receptor, an intracellular part of the receptor, or a segment of the transmembrane part of the receptor in the manufacture of a medicament for treating and/or preventing neurological diseases and disorders in an animal.

The Board found this claim not to comply with the requirements of A 123(2):

[7] In accordance with established case law of the Boards of Appeal, the relevant question to be decided in assessing whether an amendment adds subject-matter extending beyond the content of the application as filed is whether the proposed amendment is directly and unambiguously derivable from the patent application as filed.

[8] In a primary line of argumentation the appellant has referred to a combination of various claims as originally filed which when taken in combination supported claim 1. However, the board notes that when combining the various embodiments of the claims […] it transpires that the specific subject-matter of claim 1 can only be derived therefrom when making a variety of specific selections from the lists of embodiments which are the subject of these claims. By way of example the board refers to claim 12 as filed in which antibodies are listed among other candidate inhibitory binding compounds; to claim 13 as filed, in which a choice has to be made between pro-neurotrophin and neurotrophin and to claim 27 as filed where neuronal diseases are merely one of the numerous diseases listed to be treated. 

[9] Accordingly, the claims as originally filed cannot provide a basis for claim 1 to comply with the requirements of A 123(2).

As the Board found that the description did not provide such a basis either, the request was dismissed.

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To All The EQE Candidates ...

... reading this blog, the best of luck!

I shall be invigilating in Rome this year, so if you happen to take the exam there, don’t be shy, say buongiorno.

T 1138/11 – What Silence Does Not Mean

This decision contains some interesting paragraphs on the admissibility of a third party intervention.

[1.1] With letters of 10 and 15 August 2012 Bericap GmbH&Co. KG filed an intervention referring to proceedings before the “Landgericht Düsseldorf” which it had initiated against [the patent proprietor] for a ruling that it is not infringing the patent in suit […].

[1.2] The intervener’s submissions in respect of the patentability of the patent in suit and its claims need not be dealt with because the intervention has been found inadmissible by the Board for the following reasons.

[1.3] The formal requirements for the filing of an intervention of the assumed infringer set out in R 89, including the payment of the opposition fee, are fulfilled.

[1.4] According to A 105, any third party may, in accordance with the Implementing Regulations (R 89), intervene in opposition proceedings after the opposition period has expired, if the third party proves that

(a) proceedings for infringement of the same patent have been instituted against him, or

(b) following a request of the proprietor of the patent to cease alleged infringement, the third party has instituted proceedings for a ruling that he is not infringing the patent.

[1.5] As decided by the Enlarged Board of Appeal (EBA) in case G 1/94, an assumed infringer of a European patent may also intervene in appeal proceedings and may base its intervention on any ground of opposition specified in A 100.

However, this decision of the EBA is silent in respect of the requirements of A 105 that need to be satisfied by the intervener.

[1.6] Since [the patent proprietor] has not instituted proceedings for infringement of the patent in suit against the intervener, the requirements set out in A 105(1)(a) are clearly not fulfilled.

[1.7] For an intervention to be admissible according to A 105(1)(b) there need to be (national) proceedings instituted by the intervener against the patent proprietor for a ruling that it is not infringing the patent.

[1.7.1] As discussed with the parties at the oral proceedings (OPs), the intervener has not sufficiently submitted nor proven that the proceedings before the District Court of Düsseldorf have actually been formally instituted.

For the question of whether and when a law suit has been instituted, the national procedural rules apply (Benkard/Schäfers, EPC, 2nd edition 2012, Article 105, para. 15).

In this respect §§ 261(1) and 167 of the German Code of Civil Procedure are relevant:

§ 261(1) ZPO: Pending suit

By the complaint being brought, the dispute shall become pending.

§ 167 ZPO: Retroactive effect of the service

If service is made in order to comply with a deadline, or to have the period of limitations begin anew, or to have it extended pursuant to section 204 of the Civil Code (Bürgerliches Gesetzbuch, BGB), the receipt of the corresponding application or declaration by the court shall already have this effect provided service is made in the near future.

[1.7.2] The intervener has only proven that it has filed a law suit according to § 261(1) ZPO for a ruling that it is not infringing the patent in suit and that the competent chamber of the District Court of Düsseldorf has ordered the service of the writ to [the patent proprietor]. However, there is no evidence that the service has actually been executed.

[1.7.3] The Board does not concur with the intervener on its interpretation of § 167 ZPO.

According to its clear wording, this provision is applicable to a case when a law suit is filed close to a deadline or a period of limitation. If the service of the writ is then executed after that deadline or period of limitation, it provides that – under certain conditions – the later service is given a retroactive effect (ex tunc) to the date of the filing of the law suit.

The intervener’s argument that the pendency of the current appeal proceedings are to be deemed as a deadline according to § 167 ZPO is legally without substance. The intervener misconceives not just the wording of that provision but also its object.

First, § 167 ZPO serves a specific purpose in a particular stage of civil proceedings before German courts that cannot be “transferred” to the distinctive procedural situation before a Board of Appeal as an international court competent for a different jurisdiction.

Second, the condition for the retroactive effect, i.e. the actual service of the writ, has undisputedly not (yet) been fulfilled, as it is still pending. For reasons of pure logic, without the proven service of the writ there is no room for a retroactive effect of it.

[1.8] Even if the proceedings before the District Court of Düsseldorf were to be considered as legally instituted proceedings, the further requirement provided for in A 105(1)(b), i.e. that prior to the institution of these proceedings the patent proprietor has issued a request to the intervener to cease alleged patent infringement, is not met.

[1.8.1] It is an undisputed fact that [the patent proprietor] has not requested the intervener to cease alleged infringement before the intervener filed the above mentioned proceedings before the District Court of Düsseldorf.

[1.8.2] The Board does not follow the intervener’s argument that this requirement is to be determined according to the relevant national law, i.e. German law.

[1.8.3] As discussed with the parties during the OPs, this requirement is an essential legal feature in A 105(1)(b) itself with no explicit or implicit reference to the national laws of the EPC contracting states; A 125 is evidently of no relevance in the current context.

Since the laws in the contracting states vary to quite an extent from one to another, this requirement needs to be applied in a harmonized manner for all contracting states. Such a harmonization can only be secured by way of an autonomous interpretation of the provisions and legal terms of the EPC by the Board.

[1.8.4] Even if there were circumstances recognized by the German civil law courts in which a prior written warning (“Abmahnschreiben”) could be dispensed with before commencing a law suit for a declaration of non-infringement of a patent, and even if the EPO and the Boards of Appeal might in their findings consider the practice of the national institution competent for a ruling that the intervener is not infringing the patent, it is for the EPO and the Boards of Appeal alone to decide whether or not a request referred to in A 105(1)(b) has actually been issued (cf. Günzel in Singer/Stauder, EPÜ, 5th edition 2010, Article 105, para. 3).

The cited decision of the German Federal Court of Justice (BGH XII ZR 20/94) speaks certainly not in favour of the intervener. It concerns the issue of the admissibility of a negative declaration for the defence of a claim for matrimonial maintenance issued for the past and therefore concerns quite a different area of law and a very particular procedural situation, both not comparable with the present case.

[1.8.5] Apart from this, the following has to be taken into account.

An intervention of a third party is treated as an opposition and this party is thus granted the status of an opponent, as an exception to the 9-month time limit for filing a notice of opposition A 99(1)). It follows from this that A 105 is to be interpreted in a restrictive manner.

[1.8.6] Consequently, it is an essential requirement for the admissibility of this intervention that [the] patent proprietor has requested the intervener to cease alleged infringement before the intervener filed the above mentioned proceedings against [the patent proprietor].

A mere warning letter from the patent proprietor, the threat of an infringement action or a warning addressed to a third party associated with the assumed infringer, or a letter addressed to the assumed infringer that the patent proprietor reserves its right to commence legal proceedings in the future cannot be qualified as the request required by A 105(1)(b). It is rather for the intervener to establish that a request to cease an alleged infringement was addressed to him (see: T 392/97 [2.2 et seq.]; T 887/04 [2.1 et seq.]; Benkard/Schäfers, EPÜ, 2^nd edition 2012, A 105, para. 15; Günzel in Singer/Stauder, EPÜ, 5th edition 2010, Article 105, para. 3).

[1.8.7] The intervener’s letters to [the patent proprietor] and the latter’s replies […] cannot be qualified as a surrogate alternative for such a request.

With its letters of 26 June 2012 […] and of 5 July 2012 […], the intervener had explicitly requested [the patent proprietor] to confirm that it would not infringe the patent in suit “with regard to the import, sale, offer for sale and/or other forms of use of the Bericap AV3-closure in Germany” and that [the patent proprietor] would refrain from initiating any legal actions based i.a. on the patent in suit against the intervener. This request can be understood as an enquiry that [the patent proprietor] should otherwise state that it requested the intervener to cease such an infringement.

However, the decisive point in this context is that these letters were sent by the intervener to [the patent proprietor] and not vice versa and, hence, cannot qualify as a request of a patent proprietor to an assumed infringer within the meaning of A 105(1)(b). In its letter of 26 July 2012 […], [the patent proprietor] explicitly refused to issue any statement at all.

Even if one could presume an economic and also a legal interest of the intervener in having a clear legal situation in respect of the patent in suit before preparing the introduction of its product on the German market, this interest eo ipso is neither sufficient to replace the prescribed request to cease infringement, nor can it force [the patent proprietor] to either issue such a request or to clear the product release intended by the intervener.

[1.8.8] The Board to the contrary follows the argument of [the patent proprietor] that it was under no legal obligation to react in whatever way. With its letters the intervener merely confronted [the patent proprietor] with a hypothetical product.

There are simply no proceedings between [the patent proprietor] and the intervener.

The patent dispute in Turkey about the so-called Bericap AV3-closure assembly is between [the patent proprietor] and [the opponent], the latter being legally independent from the intervener according to its own submission. The proceedings in Turkey also do not have any effect on patent-related issues in Germany.

The intervener’s indication that it intended to place i.a. that assembly on the German market, also cannot qualify as such.

As a consequence, there was no need nor obligation for [the patent proprietor] to express itself on an abstract question of infringement and/or to issue a request to cease such a hypothetical infringement. Accordingly, the fact that [the patent proprietor] did not comply with the intervener’s request cannot be judged as a substitute for the request to cease infringement as required in A 105(1)(b).

[1.9] Therefore the intervention is to be rejected as inadmissible.

[1.10] As far as the intervener has paid not just the opposition fee in accordance with R 89(2), 2^nd sentence EPC but also an appeal fee, the latter was paid without legal basis (G 3/04 [11]). Consequently, the appeal fee is to be reimbursed ex officio.

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