Monday, 8 April 2013

T 1843/11 – Whatever Order You Like

In this appeal against the revocation of the opposed patent the [patent proprietor] invoked several substantial procedural violations:

Wet tensile strength

[5.1] The opposed patent is directed to fibrous nonwoven web materials to be used as premoistened wipes. These web materials are characterised by inter alia a basis weight in the range of about 30 to about 90 gsm and “a wet tensile strength (for 55 gsm basis weight) in the machine direction of at least about 160 gms/25 mm” (claim 1). Due to this wet tensile strength, the web material’s serviceability and resistance to sheet material breakage during manufacturing operations, as well as its handling on automated equipment, is improved and the finished material is able to resist tearing or puncturing during dispensing and use […].

[5.2] The Opposition Division (OD) revoked the patent for lack of sufficiency of disclosure as the skilled person was considered not to know how to determine the parameter “wet tensile strength (for 55 gsm basis weight)” in claim 1 and thus was not able to tell whether he was working within the forbidden area of the claims or not.

[5.3] In the statement of grounds of appeal […], the proprietor […] complained that a substantial procedural violation had been committed by the OD as its decision neither acknowledged nor gave any reasons as to the following argument (in the following: “wet tensile strength argument”):
“...the skilled person did know whether he or she was working within the forbidden area of the claims because the skilled person simply had to prepare a sheet of basis weight 55 gsm for a given composition and measure the wet tensile strength. If the wet tensile strength of this particular sheet composition satisfied the criteria in claim 1, then a sheet having any basis weight within the claimed range for this specific sheet composition must fall within the scope of claim 1.”
[5.4] In the following, it will be examined whether the [patent proprietor’s] complaint is justified. In this respect, it has first to be decided whether it is credible that the wet tensile strength argument was indeed made by the [patent proprietor] during the first instance opposition proceedings.

[5.4.1] The [patent proprietor] had complained in its letter of 15 August 2011, i.e. after issuance of the OD’s decision and prior to the present appeal, that despite the above wet tensile strength argument having been made during the oral proceedings (OPs), it had been omitted from the OD’s decision and the minutes. The [patent proprietor] requested accordingly that the minutes be corrected.

[5.4.2] The OD refused this request as follows:
“The Proprietor’s request for correction of the minutes of the OPs which took place on the 24th May 2011 is rejected. The OD considers that the requirements of R 124(1) of those containing the essentials of the OPs and the relevant statements made by the parties are fulfilled.”
This statement is not responsive to the [patent proprietor’s] complaint and in particular does not dispute in any way that the wet tensile strength argument was made during the OPs.

[5.4.3] For its part, the [opponent] has not, at any time during the opposition or appeal proceedings, disputed that the wet tensile strength argument was made during the OPs before the OD.

[5.4.4] Finally, apart from having been made during the OPs, the wet tensile strength argument in fact was also made during the written opposition proceedings, namely in the [patent proprietor’s] letter of 21 April 2011 […]. More particularly, in this letter, the [patent proprietor] argued as follows:
“In any case, to establish whether or not a nonwoven web material falls within the scope of claim 1 the skilled person only has to take the fibrous composition of its web and prepare a similar web material with a basis weight of 55 gsm and then measure its wet tensile strength. This process involves no inventive skill and does not represent an undue burden on the skilled person.”
[5.4.5] In view of the above, it is credible to the board that the [patent proprietor’s] wet tensile strength argument was advanced twice during the opposition proceedings, namely in the written proceedings (letter of 21 April 2011) and then again during the OPs.

[5.5] In view of the above, it has to be examined whether the OD’s decision is indeed silent about the [patent proprietor’s] wet tensile strength argument.

The only argument of the [patent proprietor] addressed in the OD’s decision is the argument that a linear relationship between the basis weight and the wet tensile strength exists such that with the value for e.g. a 30 gsm basis weight, the value for a 55 gsm basis weight can be obtained by linear extrapolation […].

This argument is not related to the [patent proprietor’s] wet tensile strength argument. More particularly, while the argument dealt with by the OD implies that the wet tensile strength at a basis weight of 55 gsm can be obtained mathematically by a linear extrapolation, the [patent proprietor’s] wet tensile strength argument in fact meant that a sample with a basis weight of 55 gsm must actually be prepared in order to obtain this wet tensile strength.

Hence, despite the wet tensile strength argument having been raised in the written and oral opposition proceedings, the OD did not address it at all in its decision.

[5.6] It remains to be decided whether this constituted a substantial procedural violation.

[5.6.1] According to R 111(2), decisions of the EPO which are open to appeal shall be reasoned.

Although the OD is not required to address each and every argument of a party (R 19/10 [6.2] and R 17/11 [4]), the important question is whether the party concerned can objectively understand whether the decision was justified or not.

In this respect, the decision should contain at least some motivation on crucial points of dispute, in order to give the party concerned a fair idea of why its submissions were not considered convincing and to enable it to base its grounds of appeal on relevant issues (T 70/02 [7]). The points to be addressed are in particular arguments which may militate against or cast doubt on the decision in question (T 246/08 [2.2]).

[5.6.2] As will be seen, the present decision of the board acknowledges sufficiency of disclosure on the basis of the [patent proprietor’s] wet tensile strength argument […]. This argument is thus clearly crucial to the point decided upon by the OD.

[5.6.3] The fact that no reasons were given in the decision of the OD why the [patent proprietor’s] wet tensile strength argument was not an answer to the objection under A 83 therefore amounts to a substantial procedural violation.

[5.6.4] The [opponent] argued in this respect that the [patent proprietor] was given ample opportunity to make submissions as regards sufficiency of disclosure in writing before the OPs and that the [patent proprietor] made additional submissions on this point during the OPs itself. The decision was therefore not based on a ground or evidence on which the [patent proprietor] had not had an opportunity to present its comments, and there was therefore no violation of A 113(1).

However, as stated in T 763/04 [4.4],
“A 113(1) is not a formal provision, but rather one of substance. Hence it is not sufficient to observe A 113(1) merely formally by granting the applicant the procedural possibility for presenting comments, as this was the case here. This procedural step falls short of its legislative purpose and remains a pure formality, if there is no trace in the file that such comments were indeed read and discussed on the merits, beyond a mere acknowledgement of their existence. In summary, A 113(1) requires not merely that a party be given an opportunity to voice comments, but more importantly it requires that the deciding instance demonstrably hears and considers these comments.”
Consequently, the fact that the [patent proprietor] in the present case was given the opportunity to (and in fact did) put forward the wet tensile strength argument is not sufficient for the requirements of A 113(1) to be met. What is additionally important is that the OD demonstrably heard and considered this argument and, as has been set out above […], this condition has not been met in the present case.

[5.7] Thus a substantial procedural violation has occurred as regards the omission of the wet tensile strength argument from the OD’s decision. Therefore, there is no need to elaborate on the [patent proprietor’s] further objection that this argument had also been omitted from the minutes of the OPs before the OD.

Added matter

[6.1] The [patent proprietor] argued that a further substantial procedural violation had occurred since the parties had not been given the opportunity to present arguments in respect of added subject-matter (A 100(c) and A 123(2)) during the OPs.

However, A 113(1) in this respect merely requires that a decision has to be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. Since in the present case, the OD did not base its decision on added subject-matter, there was no need to offer the parties an opportunity to address this issue. The requirements of A 113(1) were thus not violated in this respect.

[6.2] The [patent proprietor] additionally argued that it was highly inefficient and illogical to make a decision on sufficiency of disclosure without first making a decision on whether the requests were allowable under A 123(2) […].

The board is however not aware of any provision in the EPC (and none has been cited by the [patent proprietor]) that stipulates that the various patentability requirements or grounds of opposition have to be dealt with in a particular order in opposition proceedings. Therefore the order chosen by the OD, even if it were to be considered as inefficient or illogical, cannot amount to a substantial procedural violation.

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

The file wrapper can be found here.