T 2336/10 – Don’t Agonize, Organize

In this case the Board dealt with a request for re-establishment into the time limit for filing a statement of ground of appeal.

The representative and his contact at the opponent company, Mr Z., usually communicated by e-mail.

The decision to maintain the opposed patent in amended form was issued on September 15, 2010.

The time limits for filing an appeal and the statement of grounds of appeal were noted and checked by two paralegals.

The representative informed the opponent of the notification of the decision. Mr. Z answered that that unless instructions to the contrary were issued by November 15, 2010, it was to be assumed that no appeal should be filed. The representative instructed his assistant, Mrs R., that no action should be taken in the absence of instructions from Mr Z. Mrs R. entered a corresponding annotation into the computerized time limit monitoring system.

On November 11, 2010, an employee of the opponent (not Mr Z.) sent an e-mail containing relevant technical information about the case. The representative informed the opponent by e-mail of 15 November 2010 that the information received was technically relevant and stated that unless instructions to the contrary were received from the opponent an appeal should be filed. Mrs R. then amended the annotation concerning the time limit for filing the notice of appeal so that it provided for the filing of an appeal on November 23, 2010, unless instructions to the contrary were received from Mr Z. However, she failed to alter the annotation concerning the time limit for filing the statement of grounds of appeal.

On November 23, 2010, the notice of appeal was filed and the appeal fee paid. The corresponding time limit was cancelled by Mr S., who works in the Chief Clerk's Office of the representatives.

Later, when sorting through the time limits, Mrs R. relied on the annotation concerning the time limit for filing the statement of grounds of appeal and assumed that if the case was to be proceeded with there would be an e-mail to that effect from Mr Z. She therefore searched for such an e-mail from Mr Z. but could not find any e-mail with instructions to file a statement of grounds of appeal. She did not find the e-mail of November 11, 2010, because it is not normal for individual members of the opponent association to have direct contact with the opponent's representatives. She therefore assumed that in accordance with the instructions contained in Mr Z.'s e-mail of 27 October 2010 the opponent did not wish to pursue the proceedings any further.

On 24 January 2011, when Mr S. asked Mrs R. about the time limit that was due to expire the following day, she again went through all e-mails from Mr Z. and informed Mr S. that there were no e-mails with the corresponding instructions from Mr Z. Mr S. then checked the representative's central register of e-mails and likewise failed to find an e-mail from Mr Z. with the corresponding instructions. On 25 January 2011 he therefore deleted the time limit for filing the statement of grounds of appeal.

So no statement of grounds of appeal was filed in due time.

Will the Board grant re-establishment?

[4] An applicant for re-establishment of rights must, according to the wording of A 122(1), demonstrate that “all due care required by the circumstances” was taken. The duty to exercise all due care applies first and foremost to the applicant for re-establishment and then, by virtue of the delegation implicit in his appointment, to the professional representative authorized to represent the applicant before the EPO: J 3/93 [2.1].

[5] Where a loss of rights results from some error in a party’s failure to implement its intention to comply with a time limit, it is sufficient to show that the failure is due to exceptional circumstances or that it results from an isolated mistake within a normally satisfactory monitoring system: see Case Law, 6th edition, 2010, section VI.E.7.3.1, final paragraph.

[6] The appellant’s representative has sought to demonstrate that his firm operates a normally satisfactory system for monitoring time limits and that the failure to file a statement of grounds of appeal by 25 January 2011 in the present case was due to an isolated mistake.

[7] The explanations provided by the appellant’s representative are not, however, convincing. The failure to file a statement of grounds of appeal does not seem to have been due to an isolated mistake but rather to a basic error in the system used by the appellant’s representative for monitoring time limits; that error lies in the failure to distinguish between, and treat differently, the two time limits referred to in A 108. The difference between those two time limits is, however, obvious and of great significance. The two-month time limit laid down in the first sentence of A 108 concerns the filing of a notice of appeal. The decision as to whether to file a notice of appeal normally calls for a certain amount of reflection. The potential appellant and his representative, if he has one, will have to weigh up the prospects of success, the likely expense and the possible availability of alternative strategies. The four-month time limit laid down in the third sentence of A 108 concerns the filing of a statement of grounds of appeal, which is an entirely different matter. Once a notice of appeal has been filed, and the appeal fee paid, within the two-month time limit, the necessity of filing a statement of grounds of appeal within the four-month time limit is self-evident. Neither the appellant nor his representative need agonize or reflect deeply about whether to go through with that procedural step. It is something that in the normal course of events has to be done. In exceptional circumstances the appellant may of course decide to withdraw the appeal without filing a statement of grounds of appeal and before the time limit for doing so has expired, thus qualifying for the reimbursement of the appeal fee under R 103(1)(b). However, simply allowing the four-month time limit to go by without either filing a statement of grounds or withdrawing the appeal is not a rational choice; it is something to be avoided without exception since it renders the appeal inadmissible and deprives the appellant of the possibility of recovering the appeal fee.

[8] In the light of the observations made in the previous paragraph it is clear that the system for monitoring time limits operated by the appellant’s representative was inadequate inasmuch as it entailed a danger that, having filed a notice of appeal and paid the appeal fee within the two-month time limit, he might omit to file the statement of grounds of appeal within the four-month time limit or to take advantage of the possibility of a reimbursement of the appeal fee under R 103(1)(b). The appellant’s representative was content to operate a system under which an assistant – admittedly a well-trained, experienced and competent assistant – was allowed to record time limits and make annotations without making the necessary distinction between the two time limits laid down in A 108.

[9] Following notification of the decision under appeal, a colleague of the appellant’s representative recorded the relevant time limits (25 November 2010 and 25 January 2011) in the computer-operated system for monitoring time limits. Initially an annotation was entered into the system to the effect that no action should be taken in the absence of instructions from Mr Z. The same annotation was made for both the time limits. At a later stage “technically relevant information” was received and the representative decided that an appeal should be filed unless his client issued instructions to the contrary. His assistant amended the annotation concerning the two-month time limit for filing the notice of appeal but did not amend the annotation concerning the four-month time limit for filing the statement of grounds of appeal. That was clearly not the best way to proceed and in a well-organized firm of professional representatives one would not expect matters to be arranged in such a way.

[10] Once the representative had reached the conclusion that an appeal should be filed unless instructions to the contrary were to be received, it was necessary to import into the computer-operated system for monitoring time limits some means of ensuring that the notice of appeal would be filed and the appeal fee paid by 25 November 2010 and that the statement of grounds of appeal would be filed by 25 January 2011.

[11] It is in any event necessary to operate a system which ensures that, once a notice of appeal has been filed, a statement of grounds of appeal will in the normal course of events be prepared and filed within the relevant time limit (unless, exceptionally, a decision is taken to abandon the appeal and obtain a reimbursement of the appeal fee). It makes no sense to have, in a computer-operated (or manual) system for monitoring time limits, an annotation to the effect that a statement of grounds of appeal should only be filed if specific instructions are received from the client. The only logical annotation, regarding the four-month time limit laid down in the third sentence of A 108, is an annotation to the effect that, in the event of the notice of appeal having been filed and the fee paid, a statement of grounds of appeal must be filed before the period expires, unless instructions to withdraw the appeal are received.

[12] Notwithstanding the unfortunate annotation that was entered in the computer-operated system, and the failure to amend it after it became apparent that an appeal was likely to be filed, it should still have been possible to avoid missing the time limit for filing the statement of grounds of appeal if due care had been exercised in the days and weeks preceding the expiry of the time limit on 25 January 2011. The explanations provided by the appellant’s representative about the checks performed in January 2011 do not lead the Board to believe that all due care required by the circumstances was exercised.

[13] Clearly the people within the representative’s firm who were responsible for monitoring time limits were aware that the time limit was about to expire but they did not take certain steps, the necessity of which ought to have been apparent to experienced staff familiar with EPO procedures. The crucial error was to focus on searching for an email from a specific individual (Mr Z.) and to persist in the mistaken belief that nothing needed to be done in the absence of explicit instructions to file a statement of grounds of appeal. For reasons explained above, the first and most obvious step to be taken, when it is clear that the time limit for filing a statement of grounds of appeal is about to expire, is to ascertain whether the corresponding notice of appeal was filed and the appeal fee paid. If that had been done in the present case it would have been obvious to properly trained and experienced staff that a statement of grounds of appeal had to be prepared and filed by 25 January 2011 in the absence of a clear instruction to the contrary.

[14] Simply to delete the time limit from the monitoring system without taking the necessary action was not an option, because that entailed losing not only the right to pursue the appeal but also the possibility of recovering the appeal fee. Searching for explicit instructions to file a statement of grounds of appeal is misconceived, since it involves reversing what ought to be the normal rule of sound practice (i.e. to file such a statement in the absence of instructions to the contrary). That error was compounded by searching exclusively for an incoming e-mail from a single individual (Mr Z.) within the opponent association. In fact if the search had been widened so as to include outgoing e-mails to that single individual the time limit would probably not have been missed. Annex 5 to the application for re-establishment of rights reproduces an e-mail of 15 November 2010 in which the opponent’s representative informed Mr Z. that, having checked the documents (presumably the documents supplied in an e-mail of 11 November 2010 by an unnamed person within the opponent association other than Mr Z.), he had formed the view that a large part of the arguments used by the Opposition Division in the decision under appeal could be overcome and that he would be filing an appeal unless instructions to the contrary were received by 20 November 2010. It is difficult to understand why that e-mail did not come to light when the persons responsible for monitoring time limits within the representative’s firm carried out various checks and searches in January 2011 before deleting the time limit from the computer-operated system. Moreover, that e-mail was sent in reply to an e-mail of 12 November 2010 in which Mr Z. had expressly answered “yes” to the question whether an appeal should be filed but had asked the representative to check the relevant documents once more. Thus, even if only incoming e-mails from Mr Z. were being searched for in January 2011, it should have been clear that a statement of grounds of appeal had to be filed.

[15] It is well established that a professional representative may entrust routine tasks such as noting time limits to an assistant, provided that (i) a suitable person is chosen for that purpose, (ii) he or she is given proper instructions and (iii) the representative exercises reasonable supervision over the work of the assistant: J 5/80 [7]. In the present case it is questionable whether proper instructions were given to the assistants entrusted with monitoring time limits or whether a reasonable amount of supervision was exercised.

In particular, the representative does not appear to have issued proper instructions as regards the correct way to deal with the time limit for filing a statement of grounds of appeal. An assistant to whom that task is entrusted must be instructed to work on the assumption that, once the notice of appeal has been filed and the appeal fee paid, a statement of grounds of appeal will in principle have to be filed within the four-month time limit laid down in A 108. It is not logical to allow the assistant to proceed on the assumption that a statement of grounds of appeal should be filed only if specific instructions to do so are received. It is also important to ensure that the assistant is aware of the need to take positive action – such as checking with the representative or contacting the client directly – before deciding that no statement of grounds of appeal need be filed and deleting the relevant time limit from the system; a properly instructed assistant would be aware that purely passive steps, such as searching incoming e-mails, are not sufficient.

[16] Nor is there any evidence that the representative exercised reasonable supervision over the work of the assistant to whom the monitoring of time limits had been delegated. The representative has argued that the two members of staff in question (Mrs S. and Mr R.) are subject to constant supervision and training and that one of them cross-checked the work of the other in the present case. However, few details are given about specific measures of supervision and there is nothing to suggest that the supervisory action taken in this case could have prevented the missing of the time limit or made it less likely. The supervisor and the person being supervised both started from the incorrect premises that no statement of grounds of appeal needed to be filed in the absence of explicit instructions to that effect and that the purely passive step of searching for an e-mail from a single individual with the necessary instructions was sufficient. In the circumstances it would not be unreasonable to conclude that a little more direct involvement of the representative in person was called for.

[17] In conclusion, the facts and evidence submitted in support of the application for re-establishment of rights do not indicate that all the due care required by the circumstances was taken either by the appellant or by the appellant’s representative.

[18] It follows that the appellant’s rights cannot be re-established in respect of the failure to meet the time limit for filing the statement of grounds of appeal. Consequently, the appeal must be dismissed as inadmissible.

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R 15/11 – E Silentio Decreti

Here is what I believe to be the fourth successful petition for review (after R 7/09, R 3/10 and R 21/11). 

The Enlarged Board (EBA) dealt with decision T 832/09 where Board of appeal (BoA) 3.2.02 had dismissed the applicant’s appeal against the refusal of its application. The sole auxiliary request was dismissed for lack of clarity.

The petitioner pointed out that this clarity objection had never been raised; the petitioner had become aware of it only when the final decision was announced.

The EBA found no evidence to the contrary.

[2.1] As set out more in detail below (point [4], “Allowability”) there is nothing in the file of the appeal proceedings in question which supports the conclusion that the petitioner was or should have been aware during the appeal proceedings that compliance of the sole auxiliary request with A 84 was at issue.

[2.2] According to the petitioner […], the chairman, just before announcing the decision on the appeal, made a negative statement as to the compliance of the auxiliary request with A 84, but refused to give the petitioner’s representative the floor when he immediately tried to intervene and to address this requirement […] which, according to the petitioner, had never been discussed before or during the oral proceedings (OPs).

[2.3] In the circumstances of the present case it is immaterial for the purposes of R 106 whether or not these submissions give a true account of the conduct of the final stage of the OPs before the BoA. If they do, the total and final refusal to hear the petitioner effectively hindered the petitioner from exercising its right to be heard and, at the same time, prevented its representative from raising a relevant objection under R 106 (either directly or in reaction to the refusal to comment on the new objection). If for whatever reason the petitioner’s submissions regarding the final stage of the OPs in question were not taken into account by the EBA, then there would be no indication at all that the petitioner could possibly have been aware before notification of the decision under review that it would be based, within the meaning of A 113(1), on the lack of clarity in respect of the auxiliary request.

[3] Thus, on either view, the relevant objection could not be raised by the petitioner during the appeal proceedings. It follows that R 106 is satisfied.

Allowability

[4] There is no explicit or implicit indication in the file of the appeal procedure from which it can be derived that in respect of the auxiliary request a possible lack of clarity (A 84) was at any time discussed with the petitioner or that at least an objection was raised in this respect.

[4.1] The petitioner is correct in saying that the statement in the communication accompanying the summons concerning a potential discussion of inter alia A 84 […] did not amount to a specific objection under that provision regarding the auxiliary request. It expressed, at best, a conditional and quite general intention of the BoA when drafting the communication. It cannot help establish whether or not the petitioner was then actually given the opportunity to comment on that requirement within the meaning of A 113(1).

[4.2] The reasoning in point [3], last paragraph of the decision under review […] is equally inconclusive in this respect, also insofar as it refers to explanations given by the petitioner during the OPs, both orally and in the form of additional written notes. There is nothing in this paragraph or elsewhere in the Reasons including, in particular, the Facts and Submissions, which indicate or imply that at any time during the OPs the petitioner was aware or could have been aware that compliance with A 84 was at issue. The reference in point 3, second paragraph to the ‘‘crucial paragraphs of the description referred to by the [petitioner]” […] are in this respect too vague in the face of the petitioner’s assertion about this […]. The written notes referred to in the decision are not further identified by the Board and the notes produced by the petitioner bear out what is said in the petition […] above, i.e., they do not concern the crucial passage in the claim found to be unclear.

[4.3] Neither do the petitioner’s submissions, in particular its account of the final stage of the OPs before the BoA […] in any way that the right to be heard was granted in respect of the critical ground for the decision in question- on the contrary, see point [2.3] above.

[5] The EBA does not have the power or ability to investigate further whether or not there might be other facts or indications which would suggest that at any time the petitioner was indeed aware or could have been aware that the BoA had doubts as to the compliance with A 84, an awareness which would have been the minimum prerequisite for an opportunity to comment on that ground within the meaning of A 113(1). In the absence of any such indication it is clearly not for the party which alleges a breach of its right under that provision to prove the negative (negativa non sunt probanda). Nor can the EBA, in the absence of any such indications, re-construct the detailed course of the entire appeal proceedings, in particular of the OPs, in a case where the decision of the BoA has been challenged under A 112a(2)(c). Any relevant document on file, in particular the parties’ written submissions, any communication under A 15(1) RPBA, the minutes of the OPs or the facts and submissions and/or the reasons for the decision pursuant to A 111 may serve the purpose of establishing what took place, it being the usual practice of the BoA to include the relevant information in the facts and submissions and/or the reasons for the decision (rather than in the minutes of the OPs). It is for the BoA to draft its own texts in a way that enables the reader, taking into account all documents on file, to conclude that the right to be heard within the meaning of A 113(1) was respected with regard to the grounds on which the decision of the BoA is based.

[6] No such conclusion regarding non-compliance of the auxiliary request with A 84, on which ground the appeal was eventually dismissed, is present in the reasons for the decision under review, in particular not in point [3], last paragraph (point [4.2], above). Had the clarity issue been raised earlier and in a manner enabling the petitioner to comment on it, one would expect that this would be indicated by the BoA or otherwise reflected in the written reasons for the decision under review, e.g. by dealing with the party’s reaction – normally counter-arguments or amended requests, or both - in the Summary of the facts and submissions and/or in the Reasons for the decision.

[7] Under these circumstances the EBA is not in a position to establish that the petitioner’s right to be heard has been respected. So it has to be assumed that a violation of the petitioner’s rights under A 113(1) occurred which qualifies as fundamental within the meaning of A 112a(2)(c) because it concerned the ground on which the appeal was eventually dismissed by the decision under review.

Request for replacement of the members of the BoA under R 108(3)

[8] What the petitioner’s argumentation in support of that request […] boils down to is, in effect, that the replacement of all members of the BoA should be an automatic (“routine”) measure whenever the violation of the petitioner’s rights which led to the setting aside of the decision of the BoA was a mistake of the BoA itself (and not, as e.g. in case R 21/11, due to circumstances outside the Board’s control), such a mistake bringing a suspicion of partiality upon each member of the responsible board.

[9] However, such a narrow understanding of the EBA’s discretion to replace or not to replace Board members cannot be derived from the wording of R 108(3), second sentence, nor does it properly reflect its purpose.

R 108(3), second sentence stipulates quite generally that the EBA may order the replacement of board members who participated in the decision set aside. Hence, even if the decision of the Board was flawed by a fundamental procedural deficiency within the meaning of A 112a, the replacement of board members still lies in the discretion of the EBA. This means that replacement does not ensue automatically from the fact of a deficiency within the meaning of A 112a having occurred. On the contrary, the rule is that the proceedings are re-opened before the BoA responsible under the business distribution scheme (see Revision of the EPC (EPC 2000), Synoptic presentation EPC 1973/2000 - Part II: The Implementing Regulations, OJ EPO Special edition 5/2007, 166). This serves the interest of procedural economy, since the board members who are familiar with the case will normally most efficiently deal with the case again.

More importantly, however, the principle relied on in decision R 21/11, namely that the replacement of members of the BoA should not be ordered without good reason, is not merely a matter of procedural economy. As the business distribution scheme of any court, the BDSBA (see Supplement to OJ EPO 1/2013, 12 for the current version) and the adherence to it is an important element of an independent, reliable and efficient judicial system which meets the standards set by, inter alia, Article 6 ECHR. Any change of a Board’s composition without good reason would be contrary to the evident purpose of the BDSBA - and, thus, also detrimental precisely to “the public’s confidence in the judicial character of appeal proceedings” which the petitioner referred to - and must, therefore, remain restricted to situations where for objective or clearly established subjective reasons an individual member can or should no longer participate in the case. This is not only reflected in the above cited wording of R 108(3), second sentence: “The EBA may order ...” but also in the wording “... that members [not: the members] ... shall be replaced” in R 108(3) and in Article 4(1) of the BDSBA: “If a member designated ...”.

[10] Just as a decision under A 24(4), an order under R 108(3) causes a change of the composition of the BoA as originally determined pursuant to Articles 2 and 3 BDSBA. In decision G 1/05 [8], the EBA underlined the importance of Board members’ discharging their duty to sit in the cases allocated to them in the particular composition as determined by the provisions applicable thereto, viz, the right of the parties to a hearing before a judge or court in the particular composition as determined by those provisions. This means not only that Board members cannot withdraw from the proceedings at will, but also that the provisions on business distribution must apply for a case re-opened before the board, unless there is a compelling reason for proceeding otherwise. It is therefore appropriate , when exercising the power of discretion conveyed by R 108(3), second sentence, to consider the criteria and standards that have been developed for the replacement of members of the BoA following an objection of suspected partiality pursuant to A 24(3) and (4). Actually, it is the allegation of suspected partiality on which the petitioner’s request to replace (also) the rapporteur is based.

[11] It is commonly recognised in the jurisprudence of the Boards of Appeal and elsewhere that the suspicion of partiality must be justified on an objective basis and that purely subjective impressions or vague suspicions are not enough (G 1/05 [20]). The question whether or not an objection on the ground of suspected partiality is justified can only be decided in the light of the particular circumstances of each individual case (G 5/91). Such a suspicion is not objectively justified for the sole reason that a position on the matter was adopted in a prior decision of a BoA in which the board member concerned had participated (G 1/05, see also J 15/04).

[12] In the present case there is nothing concrete in support of a reasonable suspicion of partiality regarding the rapporteur. In particular, it appears that the omission to grant the petitioner an opportunity to present its comments on the question of clarity was a mere oversight to which the rapporteur did not (actively) contribute. Under these circumstances the rapporteur’s ability to approach the petitioner’s submissions during the re-opened appeal proceedings with an open, unbiased mind is not in doubt, so that the EBA does not see a reason for exercising its power under R 108(3) in the way as requested by the petitioner.

[13] This conclusion is not affected by the petitioner’s reference to decision T 584/09 in which the replacement was decided under A 24(4) by the BoA following statements pursuant to A 24(2) that the two members concerned did not want to participate in the further proceedings in order to avoid suspicion of partiality. In contrast, the present request for replacement (of the one remaining member) is to be decided on by the EBA under R 108(3) and in the absence of any objective basis for a suspicion of partiality. It is, however, completely open how, in the re-opened proceedings, the BoA, in the event of a statement by the member concerned pursuant A 24(2) or an objection by the party pursuant to A 24(3), would decide on the question of replacing that member.

[14] The order to reimburse the fee for the petition is based on R 111.

Order

For these reasons it is decided that:

1. The decision under review is set aside and the proceedings before BoA 3.2.02 are reopened.

2. The request that the members of the BoA who participated in the decision under review be replaced is rejected.

3. Reimbursement of the fee for the petition for review is ordered.

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NB: This decision is also reported on Le blog du droit européen des brevets.

T 1407/08 – Only A Product

In this revocation appeal Board 3.2.02 inter alia examined claim 1 of the fourth auxiliary request as to its compliance with A 53(c). The claim read:

An aortic graft for treatment of abdominal aortic aneurysms, the graft comprising a tubular hollow material for intraluminal insertion in the aorta, the aorta having an upper proximal aortic neck and a lower distal aortic portion forming an iliac bifurcation dividing into two iliac arteries, the graft characterized by:

a compliant graft main portion (13, 33, 59) made entirely of a knitted compliant flexible fabric material and having a generally cylindrical shape with an upper end (18, 39, 60) for secure attachment to the aortic proximal neck (5), and a lower free end (20, 41, 42, 61, 75, 76) constructed so as to wholly reside at a position inside the aneurysm above the iliac bifurcation (3, 4), the upper end of the main portion being stented with a balloon expandable stent fixed only at the upper end thereof for anchoring to the aorta neck, and the lower free end of the main portion having a thread (65, 74) for restricting a diameter of a lower edge of the compliant graft main portion to a predetermined maximum value, and

at least one compliant graft iliac portion (14, 34, 35) entirely made of compliant flexible fabric material and having a generally elongated cylindrical shape with a lower end (24, 47, 53) for secure attachment to one of the iliac arteries, and an upper end (23, 46, 52) for secure attachment in fluid communication to the lower end (20, 41, 42, 61, 75, 76) of the graft main portion, the graft iliac portion also having one balloon expandable stent attached at the upper (23) end and one balloon expandable stent attached at the lower (24) end thereof,

wherein in an expanded state, said upper end of the graft iliac portion has a diameter larger than said predetermined maximum value of the diameter of the lower edge of the graft main portion.

[4] The respondent considered that claim 1 was a so-called product-by-process claim and that it fell under the exception of A 53(c) because the process used to manufacture the product claimed was executed on the patient, i.e. was of a surgical nature.

It is clear that in the present case the aortic graft will effectively only be in its final assembled state in the human body. This is however of no relevance for the allowability of the product claim under A 53(c).

The Board points out that according to established case law, a so-called product-by-process claim must be considered to be nothing else but a product claim in which a particular way of defining the product is chosen, namely by describing steps of its manufacturing process. The use of such a way of defining the product is not to be understood as implying that something different from a product is meant to be defined or protected. In other words, it is only a way of defining a product, but the manufacturing steps are not protected and do not fall under the scope or ambit of the claim (T 219/83 [10]; T 748/98 [2]; T 248/85 [6.4]).

In the present case this means that even if the final aortic graft is normally obtained after assembly in the body of the patient during surgery, the surgical steps of introducing the different parts or portions of the graft into the body and assembling them while in the body do not fall under the scope of the claim and therefore cannot lead to an objection under A 53(c). The claim does not define any method falling under the exception of A 53(c), it defines a product which, according to established case law (T 1695/07, T 1798/08), does not fall under the exception clause.

For the sake of completeness the Board notes that it may also be possible to assemble the different parts of the claimed graft in an artificial aorta, should it become necessary to test whether a product falls under the scope of the claim or not.

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T 766/11 – Covered By The Clause

In this appeal against the rejection of an opposition Board 3.2.03 dealt with an alleged prior public use.

Claim 1 of the opposed patent read:

Control and/or regulating device for a support roller stand (2) of a continuous casting device (1) for metals, particularly for steel materials (3), wherein the support roller stand consists of several successive roller segments (8), which are respectively adjustable in regulated manner relative to one another by means of paired piston-cylinder units (13) by way of a lower frame (11) carrying the support rollers (10) and an opposite upper frame (12), for conveying, straightening and/orforimproving the internal quality and for changing the thickness of the metals, wherein on the upper frame (12) of the roller segment (8) the signals of position transmitters of the hydraulic cylinder units (13) are respectively conducted to a terminal box (21) and wherein a cable packet (23) is led from the terminal box (21) via a detachable rnedia coupling (22) to a stationary works stand (17), characterised in that for each roller segment (8) a separate axis regulator (18) with a connected valve station (26) is arranged on the stationary works stand (17) and that signals from all axis regulators (18) are respectively conducted by way of a field bus module (20) to a common memory-programmable control  (19) in a control space (25) of the continuous casting 20 device (1).

*** Translation of the German original ***

[3.1.1] The prior public use is a modernisation project of the VAI company for the continuous slab casting plant (Brammenstranggießanlage) (CSCP) of the Wuhan Iron & Steel Group Corporation (China). A copy of the agreement was filed as document O1. It is undisputed that VAI has installed a plant having the claimed features. What is disputed is whether this casting plant and in particular the positioning of the axis regulators had been made available to the public.

[3.1.2] The [opponent] pointed out that there had not been any obligation of secrecy or confidentiality concerning the continuous slab casting plant. The subject-matter of claim 1 had been made available as a consequence of the sale of the casting plant and/or a factory visit (Werksbesichtigung) during a seminar on continuous casting in China.

The agreement contains a secrecy clause (Article 15 on page 25) concerning the “know how and related technical documentation” for a period of 5 years following the conclusion of the agreement (December 21, 2000). This period overlaps the priority date of the impugned patent (November 9, 2004); thus the question of secrecy is relevant for determining whether the control systems of the CSCP belong to the prior art (A 54(2)).

The [opponent] argued that the know-how according to Article 2.3 of the agreement referred to the manufacture of the product concerned by the agreement (Vertragsprodukt), i.e. the slabs, and not to the CSCP itself.

However, the Board is of the opinion that the obligation of secrecy is not to be interpreted so narrowly, for the following reasons:

First of all, the subject-matter of the agreement is defined in Article 2 and encompasses not only the components of the CSCP but also the know-how and the technical documentation (see point 2.1 of the contract). Both are defined in point 1.22 of the contract (“Technical Documentation means the technical indices, specifications, drawings and documents (including the licensed patent and know-how) related to design, inspection, Erection, Cold Test, Commissioning, Performance Test, operation and maintenance of Contract Plant, …”) and thus concerns, as usual, information that the skilled person cannot derive from the apparent structure of the plant without further ado. Article 15 mentions that the know-how and the technical documentation are to be kept secret; this comprises at least the technical information and indications that are not apparent. The control of the individual roller segments typically are part of this.

[3.1.3] Moreover, the [opponent] referred to D23 and D24 and argued that this technology was not covered by the secrecy clause of the contract. D23 and D24 disclose “SMART” roller segments developed by VAI as well as the “ASTC” control system. According to these disclosures each roller segment has a distinct axis regulator that is connected to a master-control system located in a control room of the CSCP. D23 and D24 are scientific articles which the [opponent] has filed in order to prove that VAI had no interest in keeping the SMART segment technology and the ASTC control system secret.

It is, therefore, clear that the SMART segment and the ASTC technologies were available to the public during the five years of the secrecy obligation. However, the conclusion that the part of the subject-matter of the agreement that concerned control was not to be covered by the secrecy clause of the Article would be mere speculation. Rather, the agreement has to be interpreted according to the wording of the agreement, without referring to any further documents that are not cited in the agreement. Article 15 of the agreement, however, clearly states that the technical documentation and the know-how are to be treated as confidential, and, as explained above, this includes the control of the roller segments.

[3.1.4] The [opponent] finally referred to D22 where “know-how” was defined as follows:

“Information that enables a person to accomplish a particular task or to operate a particular device or process.”

It was of the opinion that this meant that “know-how” only concerned the operation of the CSCP, i.e. the manufacture of slabs. However, the Board is of the opinion that the “operation of the CSCP” inter alia comprised information regarding the control of the plant and was not limited to the final product. Moreover, Article 15 of the agreement expressly refers not only to know-how but also to the relevant technical documentation.

Factory visit

[3.2.1] There was a factory visit of the CSCP 3 of the Wuhan Iron & Steel Corporation during a seminar on continuous casting in Wuhan, China.

[3.2.2] The [patent proprietor] has argued that a CSCP is a very large and complex device having a many components. In view of the great number of components the Board is not persuaded that a visitor who did not know the subject-matter claimed in the impugned patent would have realized without any further explanation which structural elements, let alone the control modules disclosed in D23 and D24, were hidden behind the boxes.

[3.2.3] The [opponent] submitted that during the visit questions regarding the control of the plant could have been asked and would have been answered.

According to the case law of the Boards of appeal it is sufficient for [information] to be publicly available that there was a theoretical possibility to take note of this information. It is irrelevant whether there was any reason to search for such information or for requesting it, as well as whether a member of the public indeed did take notice of it (Case Law of the Boards of appeal, point I.C.1.8).

In T 947/99 the alleged prior public use concerned the visit of an ice-cream factory. There was no proof that a feature of the manufacturing process was explicitly explained to the visitors. This notwithstanding the Board decided that information concerning the process had nevertheless been made available to the public because

(i) the visitors were not subject to a secrecy or confidentiality obligation;
(ii) the information concerned a generally known process step; and
(iii) if a visitor had requested information on details of the manufacturing process he would have obtained the relevant piece of information (see point [10.6] of the reasons).

However, the present case differs from case T 947/99. As a matter of fact, if someone asked questions on the control of the casting plant in the course of the visit, he would not have received such information because this information was confidential according to Article 15 of the agreement.  

[3.2.4] The [opponent] has offered the testimony of Mr. S. on this issue.

The only reason for this offer of proof, however, was that Mr. S. had been present at the factory visit as an employee of the [opponent’s] (VAI’s) distribution and that he could have asked questions and received answers on behalf of VAI during the visit.

Thus the [opponent] has not made any submission concerning the proper evidence that could establish the prior public use it invokes. Also, the alleged possibility of asking questions and receiving answers corresponds to a merely hypothetical consideration of the [opponent]. The [opponent] has not asserted that questions regarding the technical construction and the mode of operation of the casting plant had indeed been asked and answered in detail.

Thus the Board found itself in a situation where it lacked a substantiated submission on behalf of the [opponent] as to what the witness could declare and why this was relevant for the technical aspects that were relevant for taking a decision in the present appeal proceedings. Moreover, the [opponent] only based its argumentation on a theoretical possibility, which, in the absence of any substantiated submission, could not establish a basis for the taking of evidence by hearing the witness.

Thus the Board has decided not to invite the witness to the oral proceedings and not to hear him.

Summary

[3.3] The sales agreement concerning the modernisation of the CSCP of the Wuhan Iron & Steel company contains a secrecy clause regarding the know-how and the technical documentation of the casting plant. The case law of the Boards of appeal has developed a narrow concept of novelty, i.e. the features of the invention have to be derived clearly, directly and unambiguously from the prior art. In the present case, for the reasons mentioned above, the secrecy clause of the agreement was not limited to the sole manufacture of slabs but also comprised technical details that typically include the controls and their arrangement.

In the course of the factory visit [the skilled person] could not realise where the control was installed and in particular whether the axis regulators were installed in the boxes that were arranged laterally. Although the participants to the factory visit were not only shown the casting plant but also had the possibility of asking questions, the details of the casting plant according to the sales agreement were covered by a secrecy agreement, which means that it is not established that a control system as defined in claim 1 was available to the public.

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

The file wrapper can be found here.

T 553/11 – Absurd

In this appeal against the rejection of the opposition sufficiency of disclosure was the dominating issue.

Main request (claims as granted)

[2.1] Claim 1 refers to a pulverised water-absorbent resin powder which is characterised inter alia by having:

• a bulk density of not lower than 0.74 g/ml;
• an average particle diameter of 150 to 600 μm;
• a content of fine powders not higher than 10 wt%; and
• a water absorption capacity of not lower than 23 g/g […].

[2.1.1] According to the opposed patent, such a powder is obtained by a process which has the steps of first pulverising the particles and then grinding them, and it is this grinding step that is needed in order to obtain powders according to claim 1 having the required bulk density […]. More specifically, by way of the grinding step, the surfaces of the particles are smoothened by eliminating angular and pointed portions […] and as a result of the particle surfaces becoming smoothened (“rounded”), the required bulk density is obtained:

“Because the polymer particles become more rounded into a uniform shape by the grinding according to the present invention, the bulk density of the ground polymer is higher than that of the unground polymer, and is preferably not lower than 0.72 g/ml, … still more preferably 0.74~0.90 g/ml …” […].

[2.1.2] Independent product claim 1 does not however contain the feature of the particle surfaces being ground and thus smoothened. This claim therefore also covers non-smoothened particles having – inter alia – a bulk density not lower than 0.74 g/ml.

[2.1.3] As was not disputed by the [patent proprietor], there is no teaching in the patent as to how to prepare such non-smoothened particles; nor does such a teaching form part of the skilled person’s common general knowledge. Therefore, on the basis of the patent and common general knowledge, the skilled person is not able to prepare non-smoothened particles according to claim 1 having the required bulk density. This part of the invention is thus insufficiently disclosed.

[2.2] The [patent proprietor] argued during the oral proceedings (OPs) that by virtue of the parameters present in claim 1, i.e. the bulk density, the average particle diameter, the content of fine particles, and the water absorption capacity, the powders of claim 1 were inherently restricted to those with smoothened particle surfaces. No insufficiency with regard to powders having non-smoothened particle surfaces could therefore arise, since such powders would not be covered by claim 1.

The board does not agree with the [patent proprietor’s] argument.

Firstly, such an inherent restriction is not derivable from the opposed patent in the context of the bulk density. All that the patent discloses in this respect is that the inventive process contains the step of grinding and that by virtue of the resulting smoothened particle surfaces, a bulk density as required by claim 1 is obtained […]. This disclosure does however not permit the reverse conclusion to be drawn, namely that all powders having the required bulk density inherently have smoothened particle surfaces.

In fact, the only evidence available in this respect points to the opposite conclusion, namely that particles with the bulk density of claim 1 do not necessarily have smoothened surfaces. More specifically, D13 (example 4) discloses polymer particles with a bulk density within the range required by claim 1 (0.79 g/ml) that are “rock-like” and thus have a surface as shown in figure 2 of D13. As is apparent from this figure, this surface is non-smoothened.

Secondly, no reasons were provided by the [patent proprietor] why the further parameters of claim 1, i.e. the average particle diameter, the content of fine particles and the water absorption capacity, inherently restrict the claimed powders to those having smoothened particle surfaces.

There is thus no reason to believe that the parameters of claim 1 inherently restrict the claimed powder such that its particles have smoothened surfaces.

[2.3] According to a second line of argument put forward by the [patent proprietor], claim 1 was inherently restricted to particles having been ground and thus having smoothened surfaces since it was essential according to the description of the patent that the pulverized particles were subjected to a grinding step in order to obtain the bulk density of claim 1. This argument in fact is different from the [patent proprietor’s] first argument […] in that it is now the description of the opposed patent rather than the parameters in the claim which is said to restrict the claim to powders with smoothened particle surfaces.

[2.3.1] The board acknowledges that it can be deduced from the description of the opposed patent that the process disclosed in the patent only allows for the preparation of powders with smoothened particle surfaces […]. It is also true that according to the description, it is thus not possible to prepare powders via this process that have non-smoothened particle surfaces having a bulk density of not less than 0.72 g/ml.

[2.3.2] The [patent proprietor’s] conclusion from this, namely that these powders are therefore excluded from claim 1, cannot however be accepted. This argument could only succeed if one were to accept that the description of the patent in this case restricts the scope of the claim on to its normal and ordinary reading.

[2.3.3] There is however no legal basis for such an approach. More specifically, the relevant legal provisions in the EPC dealing with this issue are A 84 and A 69 (and its protocol), the latter provisions in particular being intended to assist the patent proprietor in contending for an interpretation of a claim that is less rather than more restricted than its wording warrants. Therefore, if in proceedings before the EPO the proprietor wishes to argue for a narrow scope of a claim, this should be on the basis of the ordinary wording of the claim, and not on the basis of something appearing only in the description (T 1404/05 [3.4,3.6]). See also T 681/01 [2.1.1], where the board emphasized that the normal rule of claim construction is that the terms used in a claim should be given their ordinary meaning in the context of the claim in which they appear. The description may not be used to rewrite the claim and redefine the technical features required by the claim in a way not warranted by the wording of the claim itself. In particular the description cannot be relied on to exclude subject-matter from the claim which the ordinary meaning of the terms used would include as part of what is claimed.

[2.3.4] The [patent proprietor’s] argument that the description inherently restricts claim 1 to powders with smoothened particle surfaces is also not accepted for the following further reason: The [patent proprietor’s] argument implies that embodiments covered by the scope of claim 1, namely powders with non-smoothened particle surfaces having inter alia a density of not less than 0.72 g/ml, are excluded from the claim because it can be deduced from the description that these powders cannot be prepared by the process disclosed in the description. This would lead to the absurd situation that because it can be deduced from the description that a claim is not enabled, the claim cannot be attacked under A 83 or A 100(b).

[2.3.5] In summary, embodiments that are covered by the scope of a claim on its ordinary reading are not to be regarded as excluded merely because it can be deduced from the description that they are not workable.

[2.4] Therefore, claim 1 in the present case covers powders with non-smoothened particle surfaces. As the skilled person would not be able to obtain such powders on the basis of the teaching in the patent or his common general knowledge, this part of the invention is insufficiently disclosed. Hence, the ground of opposition under A 100(b) prejudices the maintenance of the patent as granted. The main request thus is not allowable.

[2.5] In view of this, the [opponent’s] further insufficiency objections against the main request need not be dealt with as far as the main request is concerned.

First auxiliary request

[…]

[4.1] Independent process claim 1 refers to a production process for a pulverised water-absorbent resin powder, which comprises the steps of:

• obtaining crosslinked polymer particles by way of an aqueous solution polymerisation step,
• pulverising the crosslinked polymer,
• grinding the resultant crosslinked polymer particles until the bulk density thereof increases to not lower than 0.72 g/ml, and
• surface cross-linking the ground particles.

[4.2] The insufficiency objection discussed with regard to the main request, namely that granted claim 1 covers insufficiently disclosed powders with non-smoothened particle surfaces, is no longer applicable to the first auxiliary request as the only independent claim (claim 1) is now directed to a process which requires grinding and thus smoothening of the polymer particles.

[4.3] However, the other insufficiency objections raised in the context of the main request still apply to the first auxiliary request and therefore will be discussed in the following.

[4.4] More particularly, the [opponent] raised a further insufficiency objection against the main request on the basis of D2. According to the [opponent], the experiments described in this document show that carrying out the process steps as defined in claim 1 (claim 10 of the main request), in particular the grinding step, is not sufficient to obtain the bulk density required by the present claims. A further technical measure is thus necessary in order to achieve the required bulk density. As no teaching is present in the patent as regards this technical measure, the skilled person would not know how to obtain the required bulk density and thus the invention as defined in claim 1 is insufficiently disclosed.

[4.4.1] D2 describes experiments in which the [opponent] attempted to repeat example 1 of the opposed patent. In these experiments, acrylate polymers were prepared using various temperature profiles during polymerisation […]. In two different experiments using two different pulverisers, the polymers were then pulverised, ground and classified (isolation of the 212-850 mym fraction) in a way similar to that in example 1 of the opposed patent […]. The obtained fractions were subsequently surface crosslinked.

The bulk densities of the obtained samples are shown in the table on page 12 of D2. As can be seen from this table, none of the pulverised and ground samples (denoted Ex1_1, Ex1_2, Ex1_3, Ex1_4, Ex2_1, Ex2_2, Ex2_3 and Ex2_4) has a bulk density equal to or above 0.72 g/ml as required by claim 1 of the first auxiliary request.

Consequently, even though in the experiments of D2 the process steps of claim 1 were carried out, the bulk densities were not as required by this claim. It therefore seems to be credible to the board that the steps of claim 1 as such are not sufficient to obtain the required bulk density.

[4.4.2] In the board’s view, however, this does not establish insufficiency of disclosure. In the present case, it is self-evident that in order to obtain the required bulk density by the steps of claim 1, the bulk density of the starting material before grinding must not be too low, since grinding can increase the bulk density only to a certain extent. The skilled person trying to work the invention would therefore approach the task appreciating that the bulk density of the pulverised particles before grinding must be sufficiently high so as to obtain the required bulk density after grinding.

It can be deduced from the opposed patent that bulk densities before grinding in the range of e.g. 0.64 g/ml to 0.68 g/ml are suitable in this respect (see comparative examples 1 to 7, where bulk density values of non-ground samples are reported).

D2 does not contain any information as regards the bulk densities of the particles before the grinding step and it was acknowledged by the [opponent] during the OPs before the board that in fact these values may have been below the values used in the opposed patent. Hence, D2 does not establish that the skilled person carrying out the process as defined by claim 1, when appropriately construed, would be unable to obtain the required bulk density.

[4.5] The [opponent] raised a further insufficiency objection in view of D3. This document describes experiments where two commercially available samples were ground but where only bulk densities below the lower limit of claim 1 were obtained. According to the [opponent], in the same way as with D2, these experiments proved that the process steps of claim 1, in particular grinding, were not sufficient to obtain the bulk densities required by this claim.

The [patent proprietor] stated on page 5 of its letter of 17 November 2011 that the commercial polymers used in D3 had already been surface crosslinked before they were used by the [opponent] in its experiments. This statement was reiterated during the OPs before the board and the [opponent] did not dispute it, either in the written or during the OPs. Under these circumstances, the board can only accept that in the experiments described in D3 the surface crosslinking step was applied before the polymers were ground. These experiments thus differ from the process of claim 1 in that surface crosslinking is carried out before grinding while claim 1 requires the opposite, ie surface crosslinking subsequent to grinding. Therefore, contrary to the [opponent’s] assertion, D3 does not demonstrate that the process steps of claim 1 are not sufficient to obtain a bulk density as required by this claim.

[4.6] The [opponent] finally argued with regard to the main request that claim 1 contained an open-ended range for the water absorption capacity (“not lower than 23 (g/g)”) and thus covered powders with non-achievably high water absorption capacities.

[4.6.1] The only claim of the first auxiliary request containing such an open-ended range is dependent claim 6.

[4.6.2] This claim, by way of its dependency on claim 1, contains the further feature that the bulk density of the ground particles is not lower than 0.72 g/ml. The lower the bulk density of a powder, the looser are the particles of the powder packed and the greater are the free spaces remaining between these particles, which in turn means the more can water penetrate into and thus be absorbed by the powder. In other words, with decreasing bulk density, water absorption capacity increases. Consequently, the lower limit of the bulk density of 0.72 g/ml implies an upper limit for the water absorption capacity. The [opponent’s] assertion that claim 6 lacks any upper limit for the water absorption capacity is thus not valid and, accordingly, no insufficiency arises in this respect. This is in line with the conclusion in T 487/89 [3.5] that if a claim which contains an open-ended range seeks to embrace values which should be as high as can be attained above a specified minimum level, while at the same time complying with the other parameters of the claim, then such open-ended parameters are normally unobjectionable under A 83 (see also T 129/88 [2.1.4] and T 773/06 [2.1]).

[4.6.3] The [opponent] referred in this respect to decision T 1008/02 and argued that according to this decision, a missing upper limit for the water absorption capacity leads to insufficiency of disclosure.

This decision concerned a case where the relevant claim did not contain an upper limit for an absorbency under load. The present board acknowledges that absorbency under load is related to the water absorption capacity as referred to in present claim 6. However, contrary to the present claim 6, the claim in T 1008/02 [II] did not contain any lower limit for the bulk density and thus, contrary to the present case, there was no further parameter which provided an implicit upper limit for the absorbency under load. The decision is thus not relevant to the present case.

[4.6.4] The [opponent] finally argued that in the examples of the opposed patent, water absorption capacity decreased with decreasing bulk density, contrary to the above consideration […]. This is however not correct. More specifically, in none of the examples using the same type of polymer does water absorption capacity (whether under load or under no load) decrease when the bulk density decreases (examples 1 to 10).

[4.7] In view of the above, the invention as defined by the claims of the first auxiliary request is sufficiently disclosed.

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

The file wrapper can be found here.

Looking Back On 2012 (Part 2)

Although the comments in response to my review of the examination appeals in 2012 (here) were mostly critical, the post was quite popular, which I interpret to mean that the topic is not without interest. 

So let us now have a look at opposition appeals.

The corresponding data are more complex and, therefore, more difficult to present than the outcome of examination appeals.

The following data are extracted from 757 decisions issued between January 10 and December 20, 2012. Needless to say, there may be 2012 decisions that have not yet been published. My extra-sensorial capacities being what they are, I have not been able to take them into account.

English was the most common language of the proceedings (62%; to be compared with 78% for examination appeals) but the share of German was not negligible (almost 29%) and French took a 9% share. That German is more often used than in examination proceedings might be a consequence of bifurcation of patent infringement proceedings in Germany.

In principle, there are three possible outcomes to oppositions. The opposition can be rejected, the patent can be maintained in amended form or even revoked. When we consider opposition appeals, we have to deal with a situation that is more complicated than for examination appeals because almost all examination appeals have their origin in a refusal of the application, whereas first instance opposition proceedings have three possible outcomes. Depending on who files the appeal, the range of action of the Board of appeal may be limited, because of the prohibition of reformatio in peius.

Let us first consider what the origin of the 757 opposition appeals was:

Most appeals resulted from a decision maintaining the opposed patent in amended form (43%). Revocation appeals were second (almost 36%). Almost 21% of the appeals had their origin in a rejection of the opposition. The single other case was related to a correction.

Before we go into details, let me present you the overall outcome for oppositions that went before the Boards of appeal. If we consider only the 669 cases where the Boards took a final decision on the outcome of the opposition (leaving aside remittals for further prosecution, lapses of the patent and decisions on more exotic cases), we obtain the following graph.

In opposition cases that went through first and second instance, the most frequent outcome in 2012 was the revocation of the patent (more than 52%). The patent survived without amendments in only 13% of the cases.

Please note, however, that this graph does not show the overall fate of oppositions because, obviously, my results do not take account of oppositions that were terminated after the first instance decision (i.e. where no appeal was filed).

If we add the cases where the Boards remitted to the first instance (but leave aside the more exotic cases), we obtain the following graph (750 cases):

I have undertaken a comparison of the Technical Boards of appeal on this basis. Please note that this is only a snapshot and that the numbers of decisions per Board (indicated in brackets) are too low for allowing to draw statistically significant conclusions.

(click to enlarge)

Although there were considerable differences between the Boards, the situation varied not too much as a function of the technical field to which the Boards belong (although mechanics have revoked less).

Let us now delve into more detail. For obvious reasons, I will limit myself to global observations; the numbers of decisions per Board are too small to allow for reasonable comparisons between Boards.

First, I have had a closer look at first instance rejections of the opposition. In such cases only the opponent is adversely affected but all the options are available to the Board. As can be seen from the graph, in the 158 cases on which a decision was taken in 2012 the Boards either confirmed the rejection (i.e. dismissed the appeal; 40%) or revoked the patent (41%); maintenance in amended form was relatively rare (14%).

A possible reason could be that many patents do not have strong fall-back positions: when the claims as granted fall, the patent falls.

When the OD had revoked the opposed patent (269 cases on which a decision was taken in 2012) the Boards confirmed the revocation in a majority of cases (55%).

The second most frequent outcome was a remittal to the first instance for further processing (23%), followed by maintenance in amended form (almost 17%). The rejection of the opposition after a first-instance revocation was relatively rare (4.5%).

Perhaps the most interesting cases are the ones where the OD maintained the patent in amended form. As the prohibition of reformatio in peius applies to some of these cases it is necessary to have an even closer look.

First of all, one may ask oneself whether it was the opponents or the proprietors (or both) that appealed against such decisions. As the following graph shows, it was more often the opponents that were unhappy with the outcome of the first instance proceedings. 

This might be an indication that the OD merit their reputation of being proprietor-friendly. Be that as it may, let us now have a look of what the outcome of such appeals was.

In cases where both the proprietor and the opponent file appeals, there is no prohibition of reformatio in peius, and the Board has all the options. It turns out that in 2012 the Board revoked the patent in almost half of the 103 cases (47%); further amendments was the second most frequent outcome (32%) whereas a dismissal of the appeal (leaving the patent as amended by the OD) and rejection were less frequently observed (10% and 7%, respectively). In 4 cases the Board remitted the case to the OD for further processing.

That revocation was so frequent in this situation came as a surprise to me.

In cases where only the patent proprietor appeals, the prohibition of reformatio in peius hinders the Boards from revoking the patent. There were only 29 such cases in 2012. The outcome was as follows:

It turns out that in a majority of cases (almost 60%) the appeal was dismissed; rejection and further amendments each occurred in almost 20% of the cases.

Finally, in cases where only the opponent appeals, the prohibition of reformatio in peius hinders the Boards from rejecting the opposition. There were 194 such cases in 2012. The following graph shows the overall result:

In almost half of the cases (46%), the opponent obtained the revocation of the patent; in 22% of the cases the patent proprietor could save the patent by means of further amendments. The appeal was dismissed in about 28% of the cases. All in all, the opponents improved their situation in about two thirds of the cases.

NB: I have tried to be very careful, but as such a survey involves big amounts of data, I cannot guarantee that the above figures are free of error. If you spot a mistake, please let me know.