Looking Back On 2012 – Final Remarks

Here are some final bits and pieces regarding the activity of the Boards of Appeal in 2012, completing my first post on examination appeals (here) and the second one on opposition appeals (here).

I shall give these elements in alphabetic order:

Delays

A reader asked me whether I had information on the average delay between the first and second instance decisions. As a matter of fact, I had not extracted the date of the first instance decision, and I found the idea of looking them up (for more than 1400 decisions) disheartening. So I developed a small algorithm (based on a reasonable subset) that allows me to compute the date of decision from the appeal number allocated to it (taking into account the particularity of examination appeals, where the allocation occurs at a later date, because the first instance will check whether interlocutory revision can be granted). I have checked the algorithm on a considerable number of cases and found it to work quite well: the computed dates appear to be accurate within two to four weeks, which is sufficient for my purposes.

Here is what I found; the graph shows the number of decisions taken in 2012 as a function of the number of years that separate the first and second instance decision, for both examination and opposition appeals.

I do not think that calculating an average delay for examination appeals makes much sense, because there is a broad spread between 1 and 5 years having its maximum close to 4 years. I obtain a more Gaussian shape for opposition appeals, centered about almost 3 years.

Anyway, three years appears to be the time appellants will have to wait on average for an appeal decision. For some cases, the treatment is much faster; also, there are almost no cases where the appeal decision is taken more than six years after the first instance decision.

As of now, I do extract the date of the first instance decision, so if this blog still exists in a year’s time, I should be able to provide even more precise data for 2013.

Disciplinary Board

All 2012 decisions were published after my first two posts, which explains that they are absent from the overall graph presented in my first post. There appear to have been ten decisions in 2012, all of which related to the EQE. Five of them were filed by would-be candidates who had not been admitted, another five by unsuccessful candidates. None of the appeals was successful.

Enlarged Board decisions (pursuant to A 112)

There was only one decision: G 1/10 dealing with corrections under R 140.

Legal Board of Appeal

There were 11 decisions in 2012, dealing with a great variety of legal questions.

• Re-establishment (J 5/11, J 6/11, J 13/11, J 16/11)
• Admissibility of an appeal (J 9/11, J 10/11)
• Stay of proceedings (J 6/10, J 7/10)
• Refund of the examination fee (J 9/10)
• Refusal of an application by the Receiving Section (J 7/11)
• Recording of co-applicants (J 4/10)

Petitions for review

There appear to have been 16 decisions in 2012:

• 1 petition has been successful (R 21/11);
• 2 petitions have overcome the first hurdle but were then dismissed as being unallowable (R 9/11, R 13/11);
• 3 petitions have been dismissed as clearly inadmissible (R 14/11, R 3/12, R 5/12);
• 2 petitions have been dismissed as being partly clearly inadmissible and partly clearly unallowable (R 17/11, R 4/12);
• 7 petitions were found to be clearly unallowable (R 4/11, R 16/11, R 18/11, R 19/11, R 20/11, R 2/12, R 13/12); and 
• in one interlocutory decision the Enlarged Board rejected an objection of partiality (R 2/12).

There was one case where the petition was deemed not to have been filed (R 12/11) and no decision was taken.

In four cases the decision was said to have been unanimous.
 

Seasonality

The dates of the decisions mostly correspond to the dates of oral proceedings (OPs) before the Board. It is therefore possible to study the seasonality of OPs:

There was no pronounced summer break; July 2012 was even one of the most active months of the year and even August was far from dead. May was the most heavily burdened month. The last two facts alone would provide proof to an alien studying the EPO that the Boards of appeal are not situated in France.

Weekly Activity

OPs appear to be held mostly on Tuesdays and Thursdays (assuming that most OPs do not exceed one day).

NB: I found one decision taken on a Sunday (T 1309/11), but there is little if any doubt that this is an error. 

***

As June comes to its end, let me add my usual end-of-quarter statistics. The productivity of DG3 during the first two quarters of 2013 was higher than in 2011 and 2012 and comparable to what we had in 2008 to 2010:

The publication of the decisions has finally become much smoother than what we had seen in previous years, as the comparison between quarter 2 of 2012 (left) and quarter 2 of 2013 (right) shows. What is plotted here is the number of decisions published on the DG3 website as a function of the date of publication.

T 433/11 – Cistus Et Al

Both the patent proprietor and the opponents filed an appeal after the Opposition Division had maintained the patent in amended form.

The decision contains some interesting bits and bites.

Among other things, the novelty of claim 1 of the main request was discussed. This claim read:

Use of Cistus for producing a composition having an antiviral activity directed against rhinoviruses for inhibiting the infectiousness of rhinoviruses  for the prophylaxis and/or treatment of common cold diseases, wherein the common cold disease comprises a primary infection, caused by rhinoviruses. (additions with respect to claim 1 as granted are underlined)

*** Translation of the German original ***

[19] The Board is of the opinion that in view of the wording of present claim 1 the feature distinguishing the present claim from claim 1 as granted – “having an antiviral activity directed against rhinoviruses for inhibiting the infectiousness of rhinoviruses” – is an inherent property of compositions made from Cistus plants. The partial feature “for inhibiting the infectiousness of rhinoviruses”, when associated with the feature “for the prophylaxis and/or treatment of common cold diseases”, further indicates how the antiviral activity is obtained in the prophylaxis and treatment. However, in view of the way in which it is used in the claim, the feature “having an antiviral activity directed against rhinoviruses for inhibiting the infectiousness of rhinoviruses” does not have any effect on the definition of the common cold diseases that are to be treated. The explicit indication of this inherent property of the substance does not change the definition of the substance, and the indication of the mode of action (Wirkmechanismus) does not provide a more precise definition of the moment of administration during the prophylaxis or treatment. Thus the Board comes to the conclusion that the scope of protection of present claim 1 is the identical to the scope of protection of claim 1 as granted. […]

[28] Claim 1 concerns a so-called second medical indication, in which the use of a known product for the therapeutic treatment of a particular disease is claimed. Based on the Board’s interpretation of the claims (see point [19] above) it follows that claim 1 claims as an embodiment the “use of Cistus for producing a composition for the treatment of common cold diseases, wherein the common cold disease comprises a primary infection, caused by rhinoviruses”.

[29] Document D1 states […] under the heading “Viruses challenge the immune system”: “Sometimes the agents succeed in penetrating the natural “protective barrier”. A cold (Schnupfen) is above all caused by rhinoviruses that penetrate into the nasal mucosa. They then integrate the body’s own cells and have them produce and emit viruses. Thereby the surrounding tissue is damaged and the nasal mucosa becomes inflamed. The body reacts by increasing the production of mucus. Once the nose is congested, nose drops based on Cystus® can provide help because the polyphenols contained therein reduce the swelling and inhibit the inflammation. You can produce them by simply mixing 100 ml of Cystus® brew with 1 g of sea salt and fill the mixture into a dropper bottle from your pharmacy. […] Thus you can reach all nasal passages and you will soon be able to breathe deeply again. The inflammation of the nasal mucosa is often felt “further downwards” via a sore throat. Gurgling with Cystus® brew provides relief (also in case of purulent tonsillitis) […]. (emphasis by the Board).

[30] This extracts shows that document D1 discloses the use of nose drops made from Cytsus® (sic) brew for treating (symptoms such as a cold or sore throat) of  common cold diseases, wherein the common cold diseases include diseases due to a primary infection caused by rhinoviruses.

[31] Document D1 describes the treatment of common cold diseases by means of a medicament made from a substance called Cystus®. The document does not explicitly indicate how this substance was produced or which ingredients it contains. During the oral proceedings (OPs) the [patent proprietor] has not contested that the Cystus® products disclosed in document D1 are compositions containing constituents of plants of the genus Cistus. Thus the Board considers it to be established that document D1 discloses to the skilled person medicaments containing constituents of plants of the genus Cistus, and that any other interpretation of the expression Cystus® would go against the common understanding of the skilled person.

[32] Thus the Board is of the opinion that the skilled person knew, from document D1, both the composition defined in claim 1 as well as the therapeutic treatment of the disease mentioned therein by means of this composition. Thus document D1 discloses an embodiment within the scope of claim 1.

[33] The Board is of the opinion that the technical circumstances of the present case are clearly different from those underlying decision T 509/04. The case dealt with in decision T 509/04 concerned the “attainment of a therapeutic effect, promoting normal muscle growth in patients suffering from cerebral palsy”, which had not been disclosed in the published state of the art. In the present case, however, the treatment of patients suffering from common cold diseases caused by rhinoviruses is known from document D1. Therefore, the Board is of the opinion that the principles regarding novelty established in decision T 509/04 do not apply in the present case.

[34] The Board is also of the opinion that decision T 836/01 cannot be used for establishing novelty either. In this case the novelty of the claimed medical use was justified by the fact that the group of patients that received the treatment was different (distinct subgroup) from the one known from the state of the art, and thus novel. However, in the present case the group of patients or patient population that is to be treated is explicitly disclosed in document D1. Thus T 836/01 is irrelevant for the present case, too.

[35] The Board is of the opinion that the present case rather compares to the situation dealt with in decision T 254/93, which was later followed by the Boards in decisions T 669/01 and T 486/01. In decision T 254/93 it was decided that the mere explanation of an effect obtained when using a compound in a known composition, even if the effect was not known to be due to this compound in the known composition, cannot confer novelty to a known process if the skilled person was already aware of the occurrence of the desired effect (see headnote 2 and point [4.8] of the reasons).

[36] Thus the subject-matter of claim 1 does not comply with the requirements of A 54; the main request is to be dismissed.

The Board then dealt with the request for oral submissions by the chief executive (Geschäftsführer) of opponent 1:

[37] During the OPs, when the novelty of the main request was discussed […], [opponent 1] asked for its chief executive Dr. S. to be allowed to make submissions concerning document D1.

[38] The representative of [opponent 1] has made a corresponding statement during the OPs and has also confirmed in its letter […] in which he requested the minutes of the OPs to be corrected accordingly […] that Dr. S. wanted to make submissions in his quality as chief executive of [opponent 1]. However, as this request was only filed in the context of the discussion of novelty, the Board could only interpret this request to mean that Dr. S. wanted to make submissions from his point of view as a skilled person.

[39] The Board has dismissed this request after having heard all parties. The representative of [opponent 1] then objected that this dismissal violated its right to be heard.

[40] Irrespective of whether an employee of a party is entitled to complement the explanations of the professional representative authorized by this party in the course of OPs or whether the presence of this employee and the subject of the submissions he wants to make orally have to be announced, it appears to be appropriate indeed to give a chief executive of a party (in the present case, a Geschäftsführer of a German company, but also a person in a corresponding position in a non-German company) the opportunity to make submissions for this party because this person is de facto or at least apparently (depending on the rules laid down in the founding statutes (Gründungsstatut)) entitled to speak in the name of the company.

[41] However, the Board is of the opinion that in view of the request to be dealt with in the present case the central question is not the question of whether there is an authorisation to represent but the question of whether the request is admissible.

[42] It is irrelevant in this context whether Dr. S. wanted to make his submissions as a skilled person or as chief executive, or both. What matters is that his explanations would necessarily have contained facts (i.e. evidence or arguments) that had not been submitted before by [opponent 1] or its authorised representative. Otherwise there would not have been any reason to request that Dr. S. be authorised to make submissions. As a matter of fact, the Board is of the opinion that this request, is to be understood as a request for the admission of new facts and/or arguments that has been filed at a very late stage of the proceedings, i.e. during the OPs.

[43] However, it is within the discretion of the Board to admit new facts and arguments that have been submitted after the filing of the complete case of a party, and in particular after summons to OPs (see A 114(2) together with Article 13(1) and (3) RPBA […]).

[44] In a case that is as disputed as the present case – with pending proceedings before national courts of justice – in which the parties already had had the opportunity to make written submissions, the admission of new facts and arguments in favour of a party would very likely have caused the adverse party to request the admission of new counter-facts and counter-arguments, thereby delaying the proceedings or even requiring the OPs to be postponed. In this context it also has to be mentioned that [opponent 1] had in its letter dated September 19, 2011, filed a request for acceleration of the proceedings before the Board because of pending infringement proceedings and none of the other parties had objected to this request, which the Board has granted by summoning OPs at short notice (the original date for the OPs was February 29, 2012).

[45] Under these circumstances the Board has exercised its discretion and decided not to allow Dr. S. to make [oral] submissions.

[46] The Board does not agree with [opponent 1] that the refusal of submissions by Dr. S. has violated its right to be heard. Both [opponent 1] and all other parties to the proceedings were offered the possibility to comment on all issues that were discussed during the OPs, including the issue which Dr. S. wanted to comment, i.e. the novelty of the main request in view of document D1.

[47] Within the framework of the EPC the right to be heard enshrined in A 113(1) does not mean that the parties to the proceedings may without limitation express their opinion on all possible issues at any stage of the proceedings, because the right to be heard is, as far as the moment during the proceedings is concerned, limited by the possibility not to consider late filed submissions, which is enshrined in A 114(2) (see also Articles 13(1) and (3), which result from it).

[48] Finally, the Board notes that [opponent 1] was not adversely affected, even in case its right to be heard had been violated in any way, because its submission – even without the explanations by Dr. S. – have been successful in the end: the Board has indeed decided that document D1 destroys the novelty of the main request […].

The Board finally maintained the patent on the basis of the first auxiliary request. There is a noteworthy paragraph on the adaptation of the description that remained to be done:

[78] [Opponents 1 and 2] requested the description to be adapted during the OPs before the Board because the pending national infringement proceedings required the presentation of the final version of the impugned patent. However, the Board was of the opinion that precisely because the impugned patent is the object of national lawsuits it is necessary to be particularly careful when adapting the description. However, the Board considers this could not have been done at the end of the OPs towards 19:30 in view of the great length of the proceedings. Thus the Board has dismissed the request of [opponents 1 and 2] and has remitted the case for adaptation of the description, which, incidentally, is not unusual.

Refusing the chief executive of the opponent to make a statement under the pretense that he would intervene in the quality of a skilled person does not sound right to me. As the Board admits, when the manager speaks, the party speaks, and the party should never be refused the right to comment, even in the case where it has chosen to be represented by a patent attorney. I think the Board should not speculate on what the party would say and which consequences this could have; if the submissions are inappropriate, the Board can stop the party, just as it would stop the representative.

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

The file wrapper can be found here.

T 2149/11 – No Need To Repeat

Claim 1 of the patent as maintained by the Examining Division read (in English translation; the amendments with respect to the claim as granted are underlined):

Method for manufacturing a clutch cage of a double clutch (1), characterized by the following method steps:

• rolling a toothing system (20) into a sheet metal strip (21 ) by means of two rolls (28,29) arranged on both sides of the sheet metal strip (21), wherein the two rolls (28, 29) have an outer contour (Aussenkonturierung) generating the toothing system (20);
• separating a toothed strip (22) from the rolled sheet metal strip (21 );
• rolling up the toothed strip (22) to form a drum (23); and
• joining the butt ends of the drum (23).

The opponent contested the novelty of this claim, but the Board did not agree:

*** Translation of the German original ***

[2.1] E1 concerns a method for manufacturing a toothed hollow-cylindrical part, e.g. a sprocket (Zahnkranz) […]. The method comprises : rolling a toothing system into a sheet metal strip by means of two rolls arranged on both sides of the sheet metal strip; separating a toothed strip from the rolled sheet metal strip; rolling up the toothed strip to form a drum; and joining the butt ends of the drum.

[2.2] This document does not mention the manufacture of a clutch cage of a double clutch, but the [opponent] is of the opinion that this feature only concerns the use of the method and cannot establish the novelty of claim 1. However, [the Board] cannot share this opinion.

[2.2.1] A claim that is directed at the manufacture of a product concerns an activity comprising one or several method steps the final result of which is precisely this product and which do not only have to be suitable for its manufacture. Thus the step of manufacturing this product is part of the claimed activity, even if the wording of the claim does not repeat this manufacturing step in the list of the method steps. Within the framework of a method for manufacturing a product the manufacture of this very product indeed is a technical feature that can establish the novelty of the claimed method.

The decisions invoked by the [opponent] do not support a different understanding. Quite to the contrary, it clearly follows from G 2/88 [2.5] that the technical features of a claim to an activity are the physical steps which define such activity. None of decisions T 1179/07, T 304/08 and T 1343/04 took the view that the novelty of a claim directed at the manufacture of a product could not be acknowledged on the basis of this manufacture.

[2.2.2] Thus, as already stated by the Opposition Division […], the manufacture of a clutch cage of a double clutch alone distinguishes the claimed method from the method according to E1. […]

[2.4] Claim 1 is, therefore, novel.

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

The file wrapper can be found here.

J 4/13 – Late Payment Due To Premature Delivery

This decision deals with a request for re-establishment into the time limit for filing the renewal fee for the third year, which had fallen due on November 30, 2007.

The factual situation was as follows:

Renewal fee payments had to be made by the representative. An employee, Mrs Ariane C., was in charge of these operations. On her return from her holidays, in August 2007, she had informed her employer that she was pregnant and that she envisaged taking a maternity leave after the birth, which was expected to take place in December. After a premature delivery on October 14, 2007, she took her maternity leave and finally resigned on February 8, 2008. As her intentions were not clear before her resignation, it was difficult to find an adequate replacement strategy.

Mrs Valérie T., who had been in charge of the secretarial work for over ten years, fell seriously ill in February 2008. Her sickness finally led to her being made redundant on July 11, 2008. She was replaced by Jean-Louis B., who worked under the supervision of the representative.

The professional representative also invoked the fact that another IP law firm (Célanie) had been asked to help with the monitoring of time limits. A list of all the due dates was to be established under the supervision of a competent patent engineer of this law firm. Unfortunately, this patent engineer was unable to warn the professional representative on the November 30 time limit, probably because the list was established in chronological order.

The EPO expressed reservations on the admissibility and allowability of the request and invited the representative to comment on the objections within two months. As no response was received, the request for re-establishment was refused on October 30, 2009. The letter was received on November 3, 2009.

On March 17, i.e. well after the time limit for filing an appeal, the representative filed an appeal against this decision. He explained that it was during a meeting of the representatives of the applicant that he had learnt about the decision refusing re-establishment. As the acknowledgement of receipt had not been signed by a person entitled to do so, the appeal was filed in time. As an auxiliary request, he filed a request for re-establishment into the time limit for filing an appeal.

Here is how the Legal Board of appeal (LBA) handled this case:

*** Translation of the French original ***

Admissibility of the appeal

[1.1] The impugned decision is dated October 30, 2009. Pursuant to R 126(1), first sentence, it has been notified by means of a registered letter on November 3, 2009. Assuming a regular notification, the time limit for filing an appeal expired on January 10, 2010 (i.e. Ocober 30, 2009 + 10 days + 2 months, R 126(2) in connection with A 108, first and second sentences). The notice of appeal (completed by the statement of grounds for appeal) was received at the EPO on March 17, 2010, i.e. well beyond the legal two-month time limit. The same holds true for the appeal fee, which has been paid on March 18, 2010. Thus in principle the appeal is deemed not to have been filed (A 108, first and second sentence).

[1.2] In his notice of appeal, the representative explains that the acknowledgement of receipt had been signed by Mrs M., an employee of the Delpharm company, and not of the Gefib law firm, to which the decision of refusal had been sent and which was located in the same building as the Delpharm company. Mrs M. was not entitled to sign acknowledgements of receipt on behalf of the Gefib law firm but had to send the postman to the Gefib law firm where the registered letter was to be received. A corresponding declaration on behalf of Mrs M. was filed.

[1.3] In view of the explanations and the declaration under consideration, [the Board] has to accept that the notification was deficient.  

[1.4] Pursuant to R 125(4) “the document shall be deemed to have been notified on the date established by the EPO as the date of receipt”. Thus the LBA has to establish when the decision to refuse the request for restitution in integrum was actually received by its addressee. As the acknowledgement of receipt, which normally establishes this proof, is not regular, [the Board] comes to the conclusion that Mr B., who is the professional representative to whom the communication was to be sent (R 130(1)), was informed of the letter on February 4, 2010, as he had admitted (cf. notice of appeal […]).

[1.5] As the notice of appeal was received on March 17, 2010, and the appeal fee paid on March 18, 2010, the appeal has been filed within the two-month time limit under A 108, first and second sentence. As the statement of grounds of appeal was annexed to the notice of appeal and received on the very same day, the statement has, therefore, been received within the four-month time limit stipulated in A 108, third sentence.

[1.6] Thus the appeal is admissible.

Request for restitutio in integrum

Admissibility of the request for restitutio in integrum

Date of the removal of the cause for non-compliance (R 136(1), first sentence)

[2.1.1] According to the established case law of the Boards of appeal (see e.g. J 7/82 and T 428/98), the cause of non-compliance is removed on the date on which the person in charge of the patent application (in the present case: the duly authorised professional representative) realizes that the time limit has not been met. In the present case, this is the receipt of the communication of loss of rights dated July 4, 2008, which has made the professional representative pay the taxes that had fallen due, i.e. complete the “omitted act”. This means that the dates that could possibly trigger the two-month time limit under R 136(1), first sentence, are on or after July 5-6, 2008 – the date on which the communication of loss of rights was received – and before or on July 21, 2008, the date on which the due taxes were paid, i.e. the date on which the “omitted act” was completed.

[2.1.2] As the professional representative has filed a request for restitutio in integrum together with the corresponding grounds and paid the fee for restitutio in integrum on August 26, 2008, the two-month time limit  mentioned above has been respected, irrespective of which hypothesis is retained.

[2.1.3] Thus the request for restitutio in integrum is admissible (A 122(2), first sentence, in connection with R 136(1) and R 136(2), second sentence).

[2.1.4] In addition to that, although this is not decisive here, the Board wishes to emphasize that the fact that the EPO sends a communication pursuant to R 51(2) and establishes its date of receipt cannot constitute, as such, the date of “removal of the cause for non-compliance”. The latter date is established based on the factual elements of the case under consideration. The removal of non-compliance is a factual question that has to be decided on a case-by-case basis (see the decisions cited above, point [2.1.1]). On the other hand, contrary to what has been asserted by the professional representative, the pure and simple application of the fictitious delay of notification  (the 10-days-rule), in the present case, to the communication of the loss of rights for calculating the two-month time limit pursuant to R 136(1), first sentence, is legally wrong and would go against the established case law of the Boards of appeal.

Allowability of the request for for restitutio in integrum

Requirement of due care

[3.1.1] According to A 122(1), the applicant or, as the case may be, its professional representative has to show that it was unable to observe a time limit vis-à-vis the EPO in spite of all due care required by the circumstances having been taken.

[3.1.2] According to the established case law of the Boards of appeal, the facts of each case have to be examined as a whole, as they were before the expiration of the time limit, in the present case between November 2007 and June 2008. In other words, what is to be examined in order to determine whether “all due care required by the circumstances” is exclusively the circumstances as they were during that period.

[3.1.3] Following the absence and the departure of Mrs Ariane C., the law firm of the professional representative has implemented three levels of supervision of time limits:

(a) The replacement of Mrs Ariane C. by Mr B. the younger;

(b) the use, under these particular circumstances, of the additional help of an outside IP law firm, the Célanie law firm;

(c) the supervision of the time limits by the Benech law firm, which had remained in direct contact with the applicant.

[3.1.4] Concerning point (a):

The replacement of Mrs Ariane C. by a person that was “equally qualified”, i.e. Mr. B the younger, was said to be one of the measures establishing that all due care required by the circumstances had been taken. However, [the applicant] has not indicated or proven the date of replacement. It appears that it occurred quite some time after the time limit had been missed. In this context the Board notes that no evidence has been filed for the asserted facts, such as declarations or affidavits of the persons concerned and material elements.

[3.1.5] Concerning point (b):

The role of the Célanie law firm in the supervision of the time limits is unclear. It is not sufficient to just mention another law firm and to supply a CV of its manager. Point 16 of the statement of grounds of appeal mentions a competent patent engineer who had failed in his task. No declaration on his behalf concerning the proceedings he had supervised was filed. Generally speaking, as already indicated above, all the facts have to be justified by means of declarations or affidavits of the persons concerned. No such documents have been filed, even after the Board had expressly asked for such documents in its communication.

[3.1.6] Concerning point (c), it is true indeed that the Benech law firm has informed the Gefip law firm of the renewal fee to be paid before November 30, 2007. However, this warning has not had any effect, for reasons that have not been set forth.

[3.1.7] Finally, in point 14 of the statement of grounds of appeal it is said that the professional representative has done some supervision work, but no explanation or evidence whatsoever has been provided as to the concrete mode of supervision.

The “isolated mistake”

[3.2.1] According to the appeal, Mrs T. had been performing her duties as an assistant for ten years. In the present case, she has not carried out the task that had been entrusted to her, i.e. filing the cheque at the bank. This was said to be an isolated mistake made  by an assistant. This mistake was explained by the fact that she had fallen ill in Feburary 2008 and had been made redundant in July 2008. It was asserted that the instability and weakness caused by her sickness probably led her to make that mistake, which she had never made before.

[3.2.2] However, Mrs T. was said to have received the instruction to pay the taxes as soon as the communication was received on January 8, 2008. She has fallen ill in February 2008, i.e. one month after her “isolated mistake”. The Board cannot help but note a lack of coherence of the facts. On the other hand, point 19 of the statement of grounds of appeal asserts in regard of the deposit of the cheque at the bank that “the enclosed slip had already been filled in” and that “[t]he other payments entrusted in January … had been made”. These assertions are not supported by any evidence although the Board has expressly asked for the corresponding documents to be filed.

[4] In view of the above, the Board can only conclude that the request for restitutio in integrum is not allowable (A 122(1), together with R 136(2), first sentence). Thus the appeal has to be dismissed.

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

The file wrapper can be found here.

T 149/11 – Slavery

This is an appeal against the rejection of the opposition against the patent under consideration.

Independent claim 13 of the main request (as granted) read as follows:

13. Device for processing a slaughtering object, such as a slaughtered animal or part thereof, in a slaughter line of a slaughterhouse, the device comprising:

at least one conveyor with carriers, each for the purpose of carrying the slaughtering object, an identification being assigned to each carrier or associated slaughtering object;

means for performing at least one processing step on the slaughtered object;

at least one observer positioned along the slaughter line for the purpose of performing one or more observations on the slaughtering object;

an input station (11b) for the observer to input data relating to at least one observation on the slaughtering object;

a data-processing system (5) for processing the data input by means of the input station (11b), in order to determine a test result for the slaughtering object, which test result comprises an approval or rejection, and for storing the test result in conjunction with the corresponding identification;

at least one automatic discharging device (6a; 13a, 18a, 22; 26a), which is disposed downstream of the observer along the slaughter line and has at least a first discharge for removing the slaughtering object, if the said object has been approved, and has a second discharge for removing the slaughtering object, if the said object has been rejected;

an identification reading system (12a), which interacts with the discharging device (6a; 13a, 18a, 22; 26a), for reading out the identification belonging to the slaughtering object supplied to the discharging device or the associated carrier;

the choice of the first or the second discharge of the discharging device by the data-processing system (5) being controlled on the basis of the test result stored therein and belonging to the identification read out by the identification reading system (12a),

characterized by

means returning the slaughtered object removed via the second discharge to an upstream point in the slaughter process for repeating at least part of the processing step on the slaughtering object. (my emphasis)

The Board found this claim to be excluded from patentability under A 53(a):

[2.1] Pursuant to A 53(a), a patent cannot be granted in respect of inventions the commercial exploitation of which would be contrary to public order. However, a commercial exploitation shall not be deemed to be contrary to public order merely because it is prohibited by law or regulation in some or all of the Contracting States. Thus it needs to be examined if an exploitation of the claimed invention - i.e. not the invention itself - would be contrary to public order (“ordre public”) per se., i.e. apart from any special legislation restricting its commercial exploitation.

[2.2] Claims 13 and 14 of the main request contain the following feature:

- at least one observer positioned along the slaughter line for the purpose of performing one or more observations on the slaughtering object.

[2.3] According to the patentee, it should be obvious that the observer as such is not part of the claim. Applying the general rules on the interpretation of claims, the Board is not convinced by this position. In general, claims must be read with a mind willing to understand, and in a manner that does not render the claims illogical or devoid of technical sense. The patentee does not dispute that the above feature is clear in itself and gives the claim a clear technical meaning. He argues, though, that while the observer is necessary to carry out this non-automatic embodiment of the invention that underlies claims 13 and 14, the observer cannot reasonably be considered part of the invention as defined in those claims.

In the opinion of the Board, if an observer should not be part of the claimed invention, the claim should and could have been worded correspondingly. Given the clear wording of the claim, and the fact that such wording makes technical sense, the Board finds that the claim must be interpreted as including at least one observer.

[2.4] According to the [opponent], by including the observer as an integral part of the invention defined in these claims, its commercial exploitation contravenes basic human right and is thus contrary to “ordre public”, so that the claimed invention is subject to the exception of A 53(a).

[2.5] The Board considers that “ordre public” must be seen in particular as defined by norms that safeguard fundamental values and rights such as the inviolability of human dignity and the right of life and physical integrity. See also Singer/Stauder, Europäisches Patentübereinkommen, 6th ed. 2013, Art. 53 note 7, opining that human and civil rights, such as those guaranteed by international treaties and national constitutions, are to be regarded as the principal foundations of the legal order of the contracting states, and as such also the foundations of “ordre public”. Fundamental rights and freedoms that underpin “ordre public” are codified in Articles 4 and 5 of the European Convention on Human Rights (Convention for the Protection of Human Rights and Fundamental Freedoms, Rome 1950), according to which no one should be held in slavery, and everyone has the right to liberty and shall be deprived thereof only under certain circumstances. This corresponds to the human right of integrity, the prohibition of slavery and the right to liberty under the Charter of Fundamental Rights of the European Union (Official Journal of the European Communities C 364/1 of 18 December 2000), Articles 3 to 6.  

Since patents are instruments of private property and as such freely transferable, a patent for an invention that includes one or more human beings among its features gives rise to serious concerns as to these fundamental rights and freedoms of the particular human beings that would be the subject of such a patent when commercialized, however far-fetched such an interpretation may seem. These serious concerns regarding human liberty and the prohibition of slavery lead the Board to conclude that claims 13 and 14 of the main request contravene A 53(a).

[2.6] The Board emphasises that it is not relevant for this finding whether for the time being there exists any serious reality of infringing the human rights of the claimed observer, either as being treated as an “object of private property” or is some other manner. The prohibition of patenting with reference to the “ordre public” is neither intended nor suitable for effectively restricting acts seen as being contrary to “ordre public” (or morality). Rather, it is a question of principle, which seeks to safeguard the public trust in the patent system as a whole. This public trust would erode if the broader public outside of the patent profession would perceive that a morally unacceptable condition – here the ownership of a human being –  somehow acquires official approval through the seal of the granted patent document (see also Singer/Stauder, Europäisches Patentübereinkommen, 6th ed. 2013, Art. 53 note 13). For this reason, it is not relevant that the proprietor is unlikely ever to enforce the disputed claim in the sense of its immediate wording, e.g. by demanding the delivery up (or possibly even destruction) of the claimed device, including the observer. It is sufficient that the immediate wording could potentially lead the broader public to believe that such a claim indeed covers a human being with all its legal consequences. The Board also makes reference to R 28 and 29, the legislative history of which equally illustrates that a possible interference with fundamental human rights may well support an unequivocal and strict exclusion from patenting of such “sensible” subject-matter.

[2.7] Accordingly, the main request must fail. Since claims 11 and 12 of auxiliary request 4, and claims 13 and 14 of auxiliary requests 5 and 6 likewise comprise an observer they must also fail for the same reasons.

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

The file wrapper can be found here.

T 744/11 – Three Minutes

This is an examination appeal.

The statement setting out the grounds of appeal was received in electronic form three minutes after expiry of the four-month time limit for filing the grounds of appeal.

The registrar of the Board informed the appellant of the late receipt of the statement setting out the grounds of appeal.

The appellant responded by requesting the Board to decide under R 112(2) that the statement of grounds of appeal was filed within the relevant time limit or, in the alternative, to grant re-establishment of rights under A 122 in respect of the non-observance of the time limit for filing the statement of grounds of appeal.

[1.1] The decision refusing the European patent application was notified by registered letter on 17 November 2010 and thus was deemed to have been received 10 days later on 27 November 2010 (R 126(2)). The four-month time limit for filing the statement of grounds of appeal, under A 108, would have expired on 27 March 2011. However, this day was a Sunday, so the time limit expired at midnight on the following day (R 134(1)). The appellant filed his statement of grounds electronically. The receipt for this document was generated at 00.03 hours on 29 March 2011, i.e. three minutes after the expiry of the time limit for filing the grounds of appeal. This should normally result in the appeal being rejected as inadmissible (R 101(1)).

[1.2] The representative of the appellant argued that his office was based in Cambridge and that, since the clocks in the United Kingdom were one hour behind Central European Time (CET), he had sent the statement of grounds on 28 March 2011, which was within the time limit fixed by A108. According to Article 9(3) of the “Decision of the President of the EPO dated 26 February 2009 concerning the electronic filing of documents” (OJ 3/2009, 182) the date of receipt accorded to documents electronically filed within the EPO under R 2 should be the date on which they were received at the EPO. This wording was broad and covered, at the very least, the date in any EPC state on which the documents were received at the EPO. The time marked on the receipt was 00.03 Central European Time (CET) 29 March 2011. The United Kingdom, however, was situated in a time zone one hour behind CET, and so the time and date when the document was received at the EPO was 23.03 British Summer Time (BST) on the 28 March 2011.

The Board cannot accept this argument for the simple reason that the relevant time for the purpose of the law is the time at the EPO (i.e. the time at Munich or The Hague) and not the time in the United Kingdom. Therefore, the appellant missed the time limit for filing the grounds of appeal (A 108) which normally results in the appeal being rejected as inadmissible (R 101(1)) and, thus, in the loss of a means of redress.

[1.3] According to A 122(1), the applicant for a European patent who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit vis-à-vis the EPO shall, upon application, have his rights re-established if the non-observance in question has the direct consequence, by virtue of the EPC, of causing the loss of a means of redress.

[1.3.1] The Board considers the appellant’s request for re-establishment of rights as regards the time limit for filing the notice appeal allowable (A 122(4)), in particular because the appellant has shown that the non-observance of the time limit was not caused by lack of due care but rather by a justifiable human error of the representative. However, it is not necessary to go into more details because the appeal, though admissible, is not allowable for the reasons set out herein below. […]

The requests on file were found to lack clarity and the appeal was dismissed.

Re-establishment is not always obtained that easily, is it?

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

The file wrapper can be found here.

T 613/10 – Gimme More

In this case Board 3.4.03 had to deal with the admissibility of an opposition.

The notice of opposition was filed on January 23, 2008. It consisted in filled-in form 2300 plus two pages containing a list of twenty further prior art documents and a statement which part of each of those documents was most relevant.

The time limit for filing an opposition (TFO) expired on January 25 (Friday).

A detailed explanation of the opponent’s case was received only on January 28 (Monday).

The Opposition Division (OD) rejected the opposition as inadmissible because the notice of opposition was insufficient.

The Board came to the same conclusion as the OD.

The decision is somewhat lengthy and not the most exciting read ever. If you just want a take-away summary, here is a translation of the headnotes:

1. When the admissibility of an opposition is to be examined, the circumstances of the individual case have to be considered, in particular if the requirements of R 76(2)(c) have not been clearly and unambiguously fulfilled. Among these circumstances there is the technical difficulty of the factual situation regarding the impugned patent and the cited prior art, as well as the number of claims of the impugned patent and the number of documents cited against it, even though in principle in opposition proceedings there is no limitation to a certain number of attacks or documents cited (point [13] of the reasons).

2. It is not incumbent on the patent proprietor to elaborate its own reasoning (Begründung) based on the existing indications in the notice of opposition if they are insufficient (point [17] of the reasons).

If you want the whole thing, please carry on:

*** Translation of the German original ***

[3] Within nine months of the publication of the mention of the grant of the European patent in the European Patent Bulletin, any person may give notice to the EPO of opposition to that patent by filing a written reasoned statement (A 99(1), first sentence, and R 76(1)). Pursuant to A 99(1), first sentence, and R 76(2)(c) the notice of opposition has to contain the following: (a) a statement of the extent to which the EP is opposed and (b) of the grounds on which the opposition is based, as well as (c) an indication of the facts and evidence presented in support of these grounds.

[4] For the opposition to be admissible the requirements of R 76(2)(c) have to be satisfied at the expiration of the nine-month TFO. Submissions that are filed before the EPO after the expiration of the TFO can, therefore, not be taken into account when the compliance with the above mentioned requirements is examined. Thus the written submission filed on January 28, 2008, i.e. after the expiration of the TFO, which inter alia contains 11 pages under the heading “Factual submissions and reasons” […] cannot be considered for this examination. The fact that – as explained by the [opponent] – the Opposition Division (OD) was in possession of the complete reasons for the opposition when it took up its work is irrelevant for this examination, too. The only thing that matters in the present case is the contents of the four-page form ‘Notice of opposition to a European Patent’ that was filed within the nine-month TFO, including two additional sheets […].

[5] By ticking [the appropriate boxes] in the ‘Notice of opposition’ form, which was filed on January 23, 2008, the opponent declared that it filed an opposition against the patent as a whole and that it raised objections pursuant to A 100(a) EPC 1973, i.e. lack of novelty and lack of inventive step.

[6] Moreover, the form ‘Notice of opposition’ and the two additional sheets belonging to it cited 26 documents, which were only filed after the expiration of the TFO. According to the wording of R 76(2)(c) it is sufficient to indicate the evidence within the nine-month TFO. However, the cited evidence does not have to be filed within the TFO; according to the established case law, it can still be filed at a later time (see e.g. T 328/87 [3.3.2]). Thus, when the admissibility of the opposition is to be examined, neither the content of the evidence (T 426/08 [5.1.3]) nor the conclusiveness (“Schlüssigkeit”) of the notice of opposition, i.e. that the submission, if correct, would make the request allowable, can be relevant. This question only arises when the evidence is assessed, i.e. when [the Board] establishes whether the evidence indeed proves the asserted facts. This belongs to the examination of the allowability of the opposition, which may, pursuant to A 101(1), only be envisaged when it is established that the opposition is admissible.

[7] What is disputed here is whether in the present case the requirement of indicating the facts presented in support of the grounds pursuant to R 76(2)(c) has been complied with, i.e. whether the opposition is sufficiently substantiated.

[8] For the opposition to be admissible it is sufficient if at the moment of expiration of the nine-month TFO there is a substantiated submission on behalf of the opponent for one of the grounds for opposition it invokes. The question of whether a notice of opposition complies with the minimum requirements for sufficiently substantiated grounds for opposition pursuant to A 99(1), first sentence, and R 76(2)(c), can only be decided in view of the overall context of the case under consideration (because several relevant factors, such as the difficulty of the questions to be decided, differ from one case to the other) (T 222/85 [4]). Thus, depending on the individual case, the requirement of sufficient substantiation pursuant to R 76(2)(c) is satisfied only if the relevant “facts and evidence” are indicated to an extent that is sufficient to ensure that both the patent proprietor and the OD know what the opposition is about (T 222/85 [4]). For this objective to be attained, the submissions on the grounds for opposition have to be understandable for both the patent proprietor and the OD without further investigations (T 2/89 [5]). Consequently, the OD and the patent proprietor have to be able to clearly understand the objection and the corresponding evidence (T 204/91 [5]) and must be able to review at least one of the invoked grounds for opposition without further investigation (T 453/87 [2.2]). Whether this is indeed the case has to be determined objectively from the point of view of the skilled person of the domain concerned by the patent.

[9] According to the established case law for an opposition to be admissible it is also necessary to point out the technical interrelationships (Zusammenhänge) between the prior art cited against [the patent] and the subject-matter claimed in the patent and to explain the conclusions drawn from them by the opponent (e.g. T 861/93 [5-6] and T 28/93 [4.1]). The kind of documents cited against the patent and the complexity of the claimed subject-matter determine the detail that is required for these technical assessments in each individual case. When the documents are short and the technical facts are simple, then it may not be necessary to cite concrete passages and to provide a comparison of features if the skilled person can directly understand the factual situation on his own, e.g. by reading the document. In this context all relevant circumstances have to be taken into account (see e.g. T 302/93 [2.4 et seq.] and T 1069/96 [2.3.3]).

[10] In the present case the notice of opposition consisted of only the four-page form and two additional sheets listing as evidence documents D1 to D26. For 25 of those documents (there are no indications for D25) particularly relevant passages or figures, respectively, are indicated, without there being any reference to one of the 26 claims of the impugned patent […]. The notice of opposition does not explain which of the documents concern which of the two grounds for opposition (lack of novelty and lack of inventive step). Nor has [the opponent] compared any of the cited passages or figures with the features of the subject-matter of one of the 26 claims, or established any technical interrelationships between the document and the corresponding claim of the impugned patent.

[11] It is relevant for the question of whether the present opposition is admissible whether these few indications in the form ‘Notice of opposition’ and the two additional sheets were sufficient for enabling the OD and the patent proprietor to understand without any further investigations what the opposition was about. In particular, it matters whether the indications enabled the OD and the patent proprietor to understand the submissions of the opponent at least in view of one of the 26 claims of the impugned patent, for at least one of the grounds of opposition, without any further investigations.

[12] The [opponent] is of the opinion that the number of claims of the impugned patent or of the documents cited against it is not relevant for the question of admissibility of the opposition. It, therefore, was of the opinion that it was not relevant that the impugned patent comprised 26 claims and that 26 documents had been cited in the ‘Notice of opposition’ form, because this number did not establish an abuse of procedure and because the documents were simple and easy to understand. Moreover, an opposition was not limited to a certain number of attacks or prior art documents.

[13] The Board cannot endorse this opinion.

Even though the case law has established that the substantiation of an opposition is sufficient if the indications regarding one of the documents cited against the patent enable the OD and the patent proprietor to review the validity (Stichhaltigkeit) of one of the grounds for opposition that are invoked, the circumstances of the individual case are indeed to be considered when the admissibility of an opposition is discussed, in particular if, as in the present case, the requirements of R 76(2)(c) have not been clearly and unambiguously fulfilled. Among these circumstances there is the technical difficulty of the factual situation regarding the impugned patent and the cited prior art, as well as the number of claims of the impugned patent and the number of documents cited against it, even though in principle in opposition proceedings there is no limitation to a certain number of attacks or documents cited.

It also has to be taken into account that the ‘Notice of opposition’ form and the two additional sheets do not indicate which subject-matter of the 26 claims of the impugned patent and which of the two grounds for opposition that are invoked are concerned by the respective passages and/or figures of the 26 prior art documents.

[14] Taking into account these circumstances, the Board has come to the conclusion that the OD and the patent proprietor were not directly enabled to understand which claimed subject-matter of the impugned patent was to be attacked […] along which of the two grounds for opposition, and based on which text passages or figures of the 26 cited prior art documents, and that they, therefore, had to conduct their proper investigations.

[15] The opposition was directed at the impugned patent as a whole (see [5] above). As there were no further indications regarding specific claims of the impugned patent, the Board adopts the view of the OD according to which the subject-matter of all 26 claims of the impugned patent was attacked and not only, as stated by the [opponent], both independent claims 1 and 17. This conclusion is in line with the decision of the Enlarged Board of Appeal (EBA) G 9/91 [8], in which the EBA established that a limitation of an opposition to a certain part (subject-matter) of the patent is rather unusual in practice and that, as a rule, the patent is attacked as a whole. Because of this conclusion the Board is does not find persuasive the argument of the [opponent] according to which it was self-evident that only the independent claims mattered in an opposition.

Thus all 26 documents cited against the patent, including the text passages and figures that were indicated as particularly relevant, referred to the subject-matter of all 26 claims of the impugned patent and both grounds for opposition (lack of novelty and lack of inventive step), because both grounds were invoked without any concrete reference to any of the claims or any document cited against them. Thus each of the documents cited could in theory be considered to be novelty-destructive for the subject-matter of each of the 26 claims, which alone amounts to 676 possible attacks. And even if at first only the two independent claims of the impugned patent had to be considered for the examination of novelty, each of the 26 documents cited against the patent could be allocated to each of these two independent claims, which already amounts to 52 possible attacks. As to inventive step, the number of possible attacks was much higher because combinations of the above-mentioned documents cited against the patent were to be considered in the context of inventive step, even though no combinations were mentioned in the ‘Notice of opposition’ form and the additional sheets.

Therefore the Board agrees with the [patent proprietor] that the present opposition confronted the patent proprietor and the OD with a very considerable number of combinations and, for this reason alone, would in any case have required proper investigations on behalf of the patent proprietor and the OD. Thus it was not necessary to answer the question whether the content of the 26 documents cited against the patent in the ‘Notice of opposition’ form could at all be considered in the examination of the sufficient substantiation of the opposition (because these documents had only been filed after the TFO had expired).

[16] But even if the Board assumed, in favour of the [opponent], that there was a clearly discernable intention to contest the novelty of the subject-matter of claims 1 and 17 based on document D4 and the relevant text passages and figures cited in this context, this could not lead to the opposition being considered admissible because even in novelty attacks it is, as a rule, necessary to point out the technical interrelationships between the individual features of the subject-matter claimed in the impugned patent and the state of the art resulting from a document, as well as the conclusions drawn from them (see above, point [9]). In the present case it was indeed necessary to point out a technical interrelationship because, as convincingly argued by the [patent proprietor] in view of the subject-matter of claims 1 and 17, the corresponding technical situation was not simple and intrinsically directly understandable for the skilled person, so that he could not see or review the relevance of the cited passages of document D4 for the subject-matter of claims 1 and 17 of the impugned patent, even if the content of this document, which had been filed after the expiration of the TFO, could have been taken into account. The same holds true for document D1.

[17] The [opponent] put forth several arguments why both the OD and the patent proprietor could have reviewed the present opposition without further ado under the present circumstances, but the Board cannot endorse these arguments.

It is true indeed that the effort generated by the examination of an opposition for the OD of the EPO is not relevant for the examination of the opposition. This notwithstanding, according to the established case law, for an opposition to be admissible the OD must be able to understand (verstehen und nachvollziehen) the submissions establishing the reasons (Begründung) for the opposition, which have been filed until the expiration of the TFO, without further ado (see above, point [8]).

Moreover, neither the law nor the case law establish a duty for the patent proprietor to successively “work off” (abarbeiten) the documents that have been cited in an opposition without an indication of facts presented in support of the opposition in order to establish which of the text passages and/or figures of those documents, which have been cited as being particularly relevant, could be, say, destructive of the novelty of the independent claims of its patent. Rather, the opponent has to provide reasons for its opposition and the content of the notice of opposition has to satisfy certain legal requirements for the opposition to be admissible (see point [3] above). It is not incumbent on the patent proprietor to elaborate its own reasoning (Begründung) based on the existing indications in the notice of opposition if they are insufficient.

The above mentioned requirement for reasons only concerns oppositions, but not search reports established by the EPO. Therefore, oppositions and search report are not comparable. The European search report mentions those documents, available to the EPO at the time of drawing up the report, which may be taken into consideration in deciding whether the invention to which the EP application relates is new and involves an inventive step (R 61(1)). Incidentally, these documents are cited together with the claims to which they refer and, as the case may be, the relevant parts of each document are identified (R 61(2)). However, the search report as such does not have to contain reasons like those that are required for an opposition.

[18] The [opponent] also considers that, similar to case T 302/93, the indications provided in the notice of opposition were sufficient for the opposition to be admissible. The present situation was equivalent to the one underlying decision T 302/93 because the ‘Notice of opposition’ form and the two additional sheets indicated the relevant text passages of the cited documents without giving explicit information on the particular relevance of the text passages cited and on the precise ground for opposition or patent claim to which the relevant passage was intended to refer. As in cas T 302/93 the cited passages for one of the documents cited against the patent, i.e. document D4, were sufficient for enabling to enable the OD and the patent proprietor to establish the link between those passages, the invoked ground of novelty and claim 1 of the impugned patent. Thus the present opposition was as admissible as the one underlying decision T 302/93.

However, the Board shares the opinion of the OD and of the [patent proprietor] according to which the present factual situation is not equivalent to the one underlying case T 302/93.

As explained by the [patent proprietor], in the opposition proceedings on which decision T 302/93 is based [the opponent] had already stated in the notice of opposition that the documents D1 and D3 cited with their relevant passages referred to claims 1 – 6 and claim 1, respectively. The [opponent] is correct in stating that in case T 302/93 also there was no explicit indication for document D1 as to which ground for opposition was invoked and to which claim precisely the indicated relevant passage referred, and that the Board nevertheless based its reasoning in decision T 302/93 on the assumption that this passage self-evidently referred to the subject-matter of independent claim 1 and its lack of novelty. However, in the present case the [opponent] has not cited any claim of the impugned patent as being concerned by the cited passages of the 25 documents of the notice of opposition and, therefore, in contrast to case T 302/93, has not established any connection whatsoever between at least one of the documents cited against the patent and at least one of its claims. The Board considers this to be an essential difference between the present case and case T 302/93.

Another significant difference results from the fact that in case T 302/93 the patent as granted comprised only 9 claims (against 26 claims in the present case) and that the notice of opposition cited only 8 documents against the patent (whereas there are 26 documents cited in the present case), because, as explained under point [13] above, the number of documents cited against the patent and the number of claims of the impugned patent is relevant for the question of admissibility.

[19] The Board also considers the factual situation underlying case T 1069/96 not to be comparable with the one underlying the present case.

In case T 1069/96 what was filed was not the ‘Notice of opposition’ form but a writ of opposition (Einspruchsschriftsatz) comprising short indications of the facts and evidence, and the opposition was essentially based on an alleged prior public use. There was no explanation whatsoever in this writ of opposition in which of the evidence filed for establishing the alleged prior use the individual features of the subject-matter of the impugned patent were disclosed. As the case underlying decision T 1069/96 was not complicated as to its technical substance, the Board was of the opinion that the average skilled person was able to establish the subject-matter of the alleged prior use to the extent needed for a comparison of this allegedly used subject-matter with the subject-matter of the impugned patent during the subsequent substantive examination (see point [2.3.4.2] of the reasons).

The present factual situation differs from the one underlying decision T 1069/96 in that the extent of the cited prior art is much greater than the one cited in case T 1069/96. Moreover, the Board is not of the opinion that that the present technical situation is so simple that the opponent could refrain from pointing out a technical interrelationship and explaining its relevant conclusions (see above, point [16]).

[20] For the above reasons the opposition filed within the nine-month TFO does not contain a sufficient indication of the facts invoked as reasons (Begründung) for the opposition, for both grounds for opposition (lack of novelty and lack of inventive step). Thus none of the grounds for opposition invoked have been substantiated and the requirements of R 76(2)(c) have not been complied with in the present case. Therefore, the OD rightly dismissed the opposition as inadmissible pursuant to R 77(1). […]

The appeal is dismissed.

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

The file wrapper can be found here.