Wednesday 31 July 2013

T 578/10 – Customary


In this case the Board had to review the conclusion of the Opposition Division (OD) that the alleged prior use had not been made available to the public.

This alleged prior public use was part of the “Colorado project” in which Porsche and Volkswagen jointly developed their all-terrain vehicles Cayenne and Touareg. In the framework of this project the Autoliv company had transferred data to the J&S company (i.e. the opponent), which used the data to modify an all-metal deflector (Ganzmetallumlenker) for a seat-belt so that it would fit into a VW Touareg.

*** Translation of the German original ***

[4] The [opponent] has attacked the auxiliary request on the ground of lack of novelty over the alleged prior public use E6.

[4.1] The public availability (Offenkundigkeit) of the prior use (E6) cited by the [opponent] during the opposition proceedings has not been proven. Thus E6 is not state of the art within the meaning of A 54(2).

[4.2] The [opponent] explains that there was no implicit secrecy agreement because such an agreement was only concluded for strategically important projects.

The Board does not follow this reasoning and essentially endorses the opinion of the OD according to which the Colorado Project K40 all-metal deflector (cf. E6) was a development partnership of the companies VW, Porsche, Autoliv and J&S. It is part of the customs of the automotive industry that such developments that refer to concrete vehicle projects are subject to an implicit [duty to observe] secrecy.  Thus the question of whether the declaration of secrecy made by the collaborators of the Autoliv company when they entered the VW premises also obliged these collaborators to secrecy with respect to the objects presented by J&S on the VW premises.

Also, the Board is of the opinion that the extent of such a project as such does not allow to draw conclusions on the question that is to be answered here, i.e. public availability. Therefore, the statement of the [opponent] according to which the project “All-metal deflector Colorado” corresponded to a mere adaptation of an existing deflection fitting by J&S without any strategic importance, is not decisive.

[4.3] The [opponent] further explains that the cover and the adaptor as shown on page 13 of E6 had not been part of the Colorado project; the project only concerned the all-metal deflector. J&S had developed the cover and the adaptor as an add-on, without order or payment. Thus this part of the presentation of March 20, 2003, could not be covered by any [duty to observe] secrecy.  VW, Porsche and Autoliv were potential customers of J&S for the one-part cover and the adaptor.

The Board does not follow this reasoning. There are no clear indications that allow to see that subsequent to the presentation of pages 1 to 12 of E6 by J&S on March 20, 2003, the implicit duty to observe secrecy […] had come to an end. Page 13 is part of the assembled document (Konvolut) “Implementation Study All-Metal Deflector in the Colorado Set K40” the pages of which are consecutively numbered, which, according to the [opponent] had been presented on the VW premises on March 20, 2003. The objects shown on page 13 are vehicle specific, too, and [their development] was triggered by the Colorado project for an all-metal deflector. The Board is of the opinion that the arguments of the [opponent], according to which there was neither an order nor a payment for this project, do not constitute criteria for the existence or absence of a duty to observe secrecy. Even if it was true that there was no order for the one-part implementation of the cover and the adaptor, such an over-achievement (Übererfüllung) of an order is customary in order to convince a client of the high motivation and performance of the contractor. This does not mean, however, that there was no duty to observe secrecy for this part, and there is no indication that the nature oft he presentation had changed between the projection of page 12 and the projection of page 13 of E6. Moreover, the Board is of the opinion that it is not relevant whether the draft on page 13 was finally realized. At the time of the presentation page 13 of E6 still was an integral part of the project for which J&S had been awarded a contract.

[4.4] Furthermore, the Board is of the opinion that the argument of the [opponent] according to which the very fact that Autoliv had filed an application for IP rights (Schutzrecht) for a similar object subsequent to the presentation of the all-metal deflector on March 20, 2003, proved that the presentation could not have been confidential, does not prove anything. It is customary to keep [information] confidential until an application for IP rights has been filed.

Also, the decision T 292/93 invoked by the [opponent] is not relevant. The facts of that case concern a demonstration for potential customers on the premises of a company affiliated with the opponent. Both the opponent and the company affiliated to it were interested in presenting the object disputed in T 292/93 to potential customers. In the present case, however, the presentation of March 20, 2003, was part of a common vehicle project.

For the above reasons the Board is of the opinion that there was no prior public use, because the presentation according to E6 has not been made publicly available.

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

The file wrapper can be found here.

Tuesday 30 July 2013

T 862/10 – Look At Me


This is an examination appeal.

Claim 1 of the main request read :

A notification system (120), comprising:

an information display object (160) that presents summarized notifications (124); and

an information controller (130) that receives attentional inputs associated with a user to dynamically generate the information display object (160) on one or more display screens (150, 170) in order to facilitate user processing of the summarized notifications (124);

wherein the information controller is configured to control positioning of the information display object by dynamically moving the display object closer to the user’s focus of visual attention if a notification is determined to be urgent, and

wherein the user’s focus of visual attention is determined by at least one of determining the current cursor position, determining the place of an active cursor, using at least one head or gaze tracking component, using an attention model and determining the user’s activity or other input about focus of visual attention including gaze and pose information.

The Board found this request to lack inventive step :

Interpretation of claim 1

[3.1] During the oral proceedings (OPs), the appellant argued that the expression “dynamically moving the display object” implies a smooth movement, not a “jump”. However, the board considers that there is a priori no reason for such an interpretation and that, in fact, the description of the present application explicitly includes both possibilities of mapping a location either smoothly or in a step-function manner, i.e. by “jumping” in a non-continuous manner; […]. According to the board, the broader interpretation given in this description passage is the one that should apply.

Difference with the closest prior art

[3.2] The board considers, and the appellant has never disputed, that D1 represents the closest prior art for the subject-matter of claim 1. D1 discloses a notification system […], comprising an information display object that presents summarised notifications […] and an information controller […] that receives attentional inputs associated with a user […] to dynamically generate the information display object on one or more display screens in order to facilitate user processing of the summarised notifications […].

This means that the following features distinguish the subject-matter of claim 1 from the disclosure of D1:

(1) The information controller is configured to control positioning of the information display object by dynamically moving the display object closer to the user’s focus of visual attention if a notification is determined to be urgent.

(2) The user’s focus of visual attention is determined by at least one of determining the current cursor position, determining the place of an active cursor, using at least one head or gaze tracking component, using an attention model and determining the user’s activity or other input about focus of visual attention including gaze and pose information.

Inventive step, A 56 EPC 1973

[3.3.1] Looking first at the distinguishing feature (1), it is noted that it is largely similar to what was recognised in the appealed decision as distinguishing the subject-matter of claim 1 of the refused main request from the disclosure of D1. In the appealed decision […], that feature was simply dismissed as non-technical and it was therefore concluded that there was no inventive step. The board however considers that feature (1) needs to be analysed in more detail. The display of an object near the centre of visual attention of a user (within the “foveal vision”), so that it is more-or-less guaranteed to be seen immediately, or its display simply within the visual field of the user, so that it can be seen, may well be seen as technical effects as compared to arbitrary placement on the screen or on one of a plurality of screens. Thus measures to assess where the user is looking and to place a display object in the light of that assessment do qualify as contributing to a technical effect. However, the board notes that in the case of one screen it is a matter of experience that the whole screen is normally within the field of vision of the user. Further, displaying a value assigned to an object by means of its relative positioning, or by moving it on the screen, is clearly a presentation of information. Reference is made to T 1143/06, as well as to T 1741/08, from this board in a different composition, which discusses the case law in this area, including the case cited by the appellant in the grounds of appeal, T 643/00. The particular effects of the claimed invention put forward by the appellant, “minimising information overload and distraction”, can not be considered technical in nature according to the case law, being determined by psychological factors and typical to the question of how to present information in a particular context. Overall the board judges that determining (or attempting to determine) a user’s visual focus of attention as a point on a screen and displaying objects in positions relative to that point can be considered to have a technical effect, but that the particular choice of where to display an object dependent on a value assigned to that object (its “urgency”) cannot be. Thus for the question of inventive step the critical question is whether it would be obvious for the skilled person to adapt the notification system of D1 to take account of the visual focus of attention of the user when placing a notification on the screen.

In D1, the choice of when and how to display messages is based on their priority and on the state of the user (see abstract) and may use a different size and either a central or a peripheral location on a screen for a document or alerting window […]. In D1, the “attentional focus” of a user indicates the activity or computer application on which the user is focused. It determines whether the user is “amenable to receiving notification alerts”, in other words whether the user can be disturbed. In D1 the focus of attention can also be the focus of visual attention, viz. when the user is focusing on some application […], which will necessarily be at a particular position on the screen.

Given that D1 already clearly considers the question of how to present notifications in such a way that high priority messages attract attention, a skilled person will normally be tempted to continue along the same line, i.e. to ensure that urgent messages will receive even more attention. One way of grabbing the user’s attention which will naturally come to mind is to place the urgent information in the user’s focus of attention (visual or otherwise). Such attention grabbing is in fact part of human nature. For example, when a mother wants to attract the attention of her child which has totally immersed itself in a television programme, she may decide to stand in front of the television, i.e. in the child’s “focus of visual attention”.

The system of D1 already contains the necessary means to determine the user’s focus of visual attention (viz. the application on which the user is focusing at a given moment; […]) and it will be a matter of trivial implementation for the skilled person to use these means to determine the user’s focus of visual attention and to place an urgent message, e.g. from the periphery, at that focus of visual attention. Although it is not necessary to discuss the further issue of changing the position of messages according to their urgency, as argued above, the board also notes that in as much as D1 discloses placing non-urgent messages at the edge of a screen and urgent messages at the centre, it is also considered obvious to move a message to a position central to the focus of visual attention if its priority/urgency is increased.

As regards the expression “dynamically moving the display object”, the board considers that this expression covers a “jump” from one place to another, according to the interpretation that should be given to the word “dynamic” following [3.1] above. In the remainder of this section, however, the board assumes, for the sake of argument, that the expression is somehow changed to reflect the meaning given to it by the appellant during the OPs, i.e. that it implies a continuous movement.

The board already judged above that choosing the location of the display object in function of the urgency of the message is non-technical and hence does not contribute to the presence of an inventive step. The only matter left to consider is therefore whether some effect may be caused by the continuous nature of the movement itself, even if, as was argued by the appellant during the OPs, any such effect would only be a side-effect.

Leaving aside the normal physical changes that would occur as a consequence of the inherent technical nature of a computer display, e.g. changes in the intensity of various pixels, the only effect that could possibly be caused by a continuous movement of the display object is to attract the attention of the person looking at the display and present information to him or her that a certain message is urgent. It may also imply a kind of time limit for reacting (before the object reaches the focus of attention). However this is also only a presentation of information; the application does not include any disclosure of any technical consequences of reacting or not within this implied time limit. In other words, continuously moving the display object can serve no other objective purpose than that of presenting information as such. It therefore produces no further technical effect (i.e. no technical effect apart from the normal physical changes which inherently take place in a computer display) and does not contribute to the presence of an inventive step.

[3.3.2] Feature (2) includes several alternatives: the user’s focus of visual attention is determined by any of a number of parameters, including “other input about visual attention”. This means that it clearly also includes the possibility of determining the user’s focus of visual attention by establishing which application is currently receiving the focus of the user. This possibility is however made obvious by D1, as already covered by the reasoning given in [3.3.1] above.

[3.3.3] The subject-matter of claim 1 of the main request is therefore not inventive (A 56 EPC 1973).

[3.4] For this reason, the main request is not allowable.

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

The file wrapper can be found here.

Monday 29 July 2013

T 2284/09 – Not A Repository


This is an appeal filed after the Opposition Division had revoked the opposed patent.

Claim 1 of the main request was identical to claim 1 as granted and read (the amendments with respect to claim 1 as filed are marked):
Process for the preparation of an odour-lean polyether polyol from an unneutralised polyether polyol starting product which is obtained by reacting a starting compound having a plurality of active hydrogen atoms with one or more alkylene oxides, which process comprises consists of the steps of:

(a) contacting the neutralised or unneutralised polyether polyol product with an excess an acid having between 0.001 and 0.5 mole of free acid per kg of polyether polyol which acid has a pKa of less than 5, preferably of less than 3 at a temperature of 80 to 130°C under hydrolysis conditions,

(b) contacting the reaction mixture with water at a temperature of 80 to 130°Cunder hydrolysis conditions, and

(c) recovering the odour-lean polyether polyol.
Claim 1 of the second auxiliary request read (amendments with respect to claim 1 of the main request are marked):
Process for the preparation of an odour-lean polyether polyol from an unneutralised polyether polyol starting product which is obtained by reacting a starting compound having a plurality of active hydrogen atoms with one or more alkylene oxides, which process consists of the steps of:

(a) contacting the unneutralised polyether polyol product with such amount of acide that the amount of free acid will be between 0.001 and 0.5 mole of free acid per kg of polyether polyol which acid has a pKa of less than 5, at a temperature of 80 to 130°C,

(b) contacting the reaction mixture of step (a) with water at a temperature of 80 to 130°, wherein such amount of water is added that a two-phase system can be formed, and

(c) recovering the odour-lean polyether polyol.
The Board found the main request not to comply with the requirements of A 123(2):

[2.1] Claim 1 as granted specifies in step (a) contacting the unneutralised polyether polyol with a defined, fixed amount of free acid, namely between 0.001 and 0.5 mole/kg of polyether polyol.

Claim 1 of the application as filed specifies in part (a) contacting the neutralised or unneutralised polyether polyol with an excess of acid. No numeric quantities of acid are given in any of the claims of the application as filed.

According to page 4 lines 10-30, in particular lines 16-23 of the application as filed with respect to the term “excess” it is stated:
“In practice the term “excess” in relation to the acid added in step (a) refers to such amount of acid that the amount of free acid will be between 0.001 and 0.5 mole acid per kg polyether polyol, preferably between 0.005 and 0.2 mole acid per kg polyether polyol. The expression “free acid” as used herein refers to the acid which has not reacted with any component present in the reaction medium”.
The indicated passage continues to explain that in the case of unneutralised polyether polyol, i.e. that which is defined in claim 1 of the main request, the acid added would initially react with the potassium ions from the initiator present in the polymer. Only after these potassium ions were neutralised would any acid added remain present as “free acid”.

Thus from the indicated passage of the application as filed it emerges that the term “excess acid” is employed to denote the total amount of acid added whereby the definition of said amount is a combination of two quantities defined in different terms:
  • an amount necessary to neutralise the unneutralised polyether polyol and
  • an extra amount so that the amount of acid remaining after neutralisation is from 0.001 to 0.5 moles of acid per kg of polymer.
The first amount of acid is thus defined in functional or relative terms, namely the amount of acid needed to neutralise the potassium ions remaining from the initiator. The second amount of acid is defined in absolute or quantitative terms and is the amount of acid above (in excess of) the amount required for neutralisation, i.e. the further amount required in order to yield a given acid content (“free acid”) in the neutralised polyether polyol. The amount of “free acid” - which is between 0.001 and 0.5 mole/kg - is thus the amount over and above the quantity of acid necessary to effect neutralisation of the potassium.

From the above it emerges that, contrary to the arguments of the appellant, the terms “excess” and “free acid” as employed in the original application are neither synonymous nor interchangeable.

[2.2] In contrast to the disclosure and definition of the application as filed as discussed in the preceding section, claim 1 of the patent as granted requires the addition to the unneutralised polyether polyol of a defined, fixed amount of “free” acid i.e. between 0.001 and 0.5 mole/kg independently of any functional or relative terms i.e. regardless of whether neutralisation is effected or whether the maximum amount of acid permitted is sufficient to accomplish neutralisation of the polyether polyol.

In the light of the considerations set out in section [2.1] above, with respect to the amount of acid to be added, as denoted in the application as filed by the differing meanings of the terms “free” and “excess” acid, it emerges that there is no disclosure in the application as filed of a process whereby a single, numerically fixed amount of acid is added to the unneutralised polyether polyol. From the difference in wording of claim 1 of the main request as compared to the disclosure of the application as originally filed it emerges that the absence of the functional or relative limitation of the application as filed from the definition of the amount of acid to be added has the consequence that claim 1 of the main request defines a fundamentally different process from that specified in the application as originally filed.

[2.3] The arguments of the appellant that the skilled person would consult the description in order to ascertain what the claim is intended to specify presupposes that there is a reason to consult the description, e.g. some prima facie unclarity or inconsistency in the claim. This is however not the case. On the contrary, the claim of the patent as granted provides a coherent, cogent technical teaching and does not as it stands present the reader with any aspect that would indicate a need for interpretation or clarification. Nor has the appellant explained in what manner the wording of the claim would be deficient and therefore in need of interpretation.

[2.4] The conclusion is that claim 1 of the main request does not meet the requirements of A 123(2).

The main request is refused.

The first auxiliary request was dismissed on the same grounds. The Board then dealt with the second auxiliary request:

A 123(2)

[4] Claim 1 employs the wording of page 4 lines 10-30 of the application as filed with respect to the definition of the amount of acid. Consequently the requirements of A 123(2) are satisfied.

A 123(3)

[5.1] As explained with respect to the main request (section [2.1], above), according to the patent as granted it was required to add a defined, absolute, amount of free acid, namely between 0.001 and 0.5 moles of acid per kg of polyether polyol.

According to claim 1 of the second auxiliary request however, and as explained in section 2.1 above, the amount of acid to be added is made up of two quantities, namely that required to effect neutralisation and an extra amount (defined in absolute terms) in order to provide the amount of acid remaining in the polyether polyol after neutralisation. Thus the amount of acid which claim 1 of the second auxiliary request requires is increased, compared to the amount of acid required by granted claim 1, by the amount needed to effect neutralisation.

Consequently claim 1 of the second auxiliary request confers protection on a process involving addition of a different, greater amount of acid than the claim of the patent as granted. The effect of this amendment of the wording of part (a) of claim 1 is therefore, to enlarge the scope of protection conferred by the claim as compared to the patent as granted. This contravenes A 123(3).

[5.2] The appellant has relied upon decision T 108/91 according to which, in the case of inconsistency between the claim and the totality of the disclosure it is permissible to refer to the description and, pursuant to A 69(1), to rely on the disclosure of the description to amend the claim.

The findings of T 108/91 however are not applicable in the present case since, as explained with respect to the main request, there is no inconsistency between the claim of the granted patent and the description. In particular the examples of the patent fall within the scope of the claim as granted whereas in the case underlying T 108/91 all the examples were outside the scope of the claim. Furthermore decision G 1/93 of the Enlarged Board of Appeal (EBA), which decision refers inter alia to T 108/91, ruled that in the case of a non-disclosed limitation being introduced during examination proceedings (as is the case here), it is not permissible to remove it when so doing would extend the scope of protection. In G 1/93 the role of A 69(1) is also considered and it is concluded that the description is to be used for assessing in particular sufficiency of disclosure and in determining the scope of protection conferred by the claims. However there is no finding in G 1/93 that supports the position of the appellant that the description may be used as a repository from which amendments to the claims can be derived even if such amendments would contravene A 123(3).

Accordingly there is no basis in the EPC or in the case law of the EBA to support the position and approach of the appellant in relying on the description in order to render permissible an amendment to the claims of the patent as granted that results in change of the scope of protection.

The second auxiliary request is refused.

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

The file wrapper can be found here.

Saturday 27 July 2013

Summer Time




Dear all,

I am off the Internet for about three weeks.

I have scheduled posts so that the addicts among you will not have to suffer. However, I will not be able to react to comments, and messages sent to my mail address will remain unanswered for some time.

Obviously, as I had to schedule in advance, my forthcoming posts will not deal with the (doubtlessy earth-shaking) decisions published during my Internet abstinence period. You might want to have a look at


for fresher stuff.

Please be well-behaved during my absence.

Cheers

oliver

Friday 26 July 2013

T 2165/08 – Risky Business


This decision on a revocation appeal contains (among other things) an interesting discussion of apportionment of costs.

[45] A 104(1) provides that:
“Each party to the opposition proceedings shall bear the costs it has incurred, unless the Opposition Division (OD), for reasons of equity, orders, in accordance with the Implementing Regulations, a different apportionment of costs.”
That provision applies equally to opposition appeal proceedings by virtue of A 111(1). In such proceedings, Article 16(1) RPBA also applies and this provides that:
“(1) Subject to A 104(1), the Board may on request order a party to pay some or all of another party’s costs which shall, without limiting the Board’s discretion, include those incurred by any
(a) amendment pursuant to Article 13 to a party’s case as filed pursuant to Article 12(1);
(b) extension of a time limit;
(c) acts or omissions prejudicing the timely and efficient conduct of oral proceedings (OPs);
(d) failure to comply with a direction of the Board;
(e) abuse of procedure.”
To decide on an apportionment of costs therefore, the board must (i) receive a request therefore, (ii) be satisfied that there are reasons of equity to depart from the usual régime that each party bears its own costs, and (iii) be satisfied that the costs in question were incurred in one of the five ways listed in Article 16(1) RPBA although, as the words “without limiting the Board’s discretion” make clear, the list is not exhaustive.

[46] As regards (i), the [opponent] made a request for apportionment of costs in its letter dated 22 February 2013 and maintained it during the OPs. As regards (ii), the board considers that “for reasons of equity” indicates that some circumstances of the case call for an apportionment different from the normal régime and, as indicated by the case-law (see generally “Case Law”, 6th edition 2010, pages 740 to 763), this means costs should be awarded against a party which can be held to have caused another party unnecessary expense that could have been avoided with normal care or by compliance with prescribed or established procedures. As regards (iii), this clearly requires an examination of each apportionment request in the circumstances of the particular case. As a practical matter, (ii) and (iii) will usually need to be considered together.

[47] In the present case the [opponent] seeks an apportionment of costs because the [patent proprietor] filed its auxiliary requests 1 to 3 and document D51 on 6 February 2013 – one month before the OPs – and document D52 on 12 February 2013 – which was even closer to the OPs. The [opponent] says this caused it unnecessary work, and thus consequentially unnecessary additional costs, which would have been avoided if the requests and evidence in question had been filed, as they should have been, with the statement of grounds of appeal. The [patent proprietor] says the new requests and documents were filed as a response to the board’s preliminary opinion of 30 January 2013.

[48] In this respect the facts as shown by the file are against the [patent proprietor]. As regards the requests, in its preliminary opinion the board raised no arguments or issues which were not already dealt with in the opposition proceedings so the requests filed on 6 February 2013 could, and to comply with Article 12(2) RPBA should, have been filed with the statement of grounds of appeal dated 17 December 2008. In fact the [patent proprietor] then filed a main and four auxiliary requests which were all unchanged from requests filed before the opposition division. It seems clear that the [patent proprietor] made a conscious decision, when substantiating its appeal, to pursue the requests which did not succeed at first instance and not to file any additional requests. In doing so it took the double risk that, if it changed its mind later and filed further requests in addition or in substitution, such requests might not only be inadmissible (see Article 13 RPBA) but that, depending on the circumstances, the [opponent] might seek an apportionment of costs. Inevitably, the later in time that such further requests are filed, the greater both those risks become.

[49] In the event, the [patent proprietor] filed the requests one month before the OPs, in an appeal which had then been pending for four years, and both risks materialised. As regards admissibility of the late-filed requests, the [patent proprietor] was relatively fortunate – the [opponent] did not object to the new main request which had been presaged by the previous auxiliary request 4 and the board has found the new auxiliary request 3 admissible; but as regards the other late-filed requests, there is no plausible or adequate explanation for the late filing. It is clear that, if they had been filed with the grounds of appeal, the [opponent’s] representative could have considered them with the other requests filed then, taken its client’s instructions on them then, and dealt with them together with the other requests in the reply. By filing them much later, the [patent proprietor] made the [opponent] repeat that process just for the additional requests which will inevitably have lead to additional and avoidable costs. To have caused that was inequitable behaviour (see point [46] above). The costs in question have been incurred by an amendment to the [patent proprietor’s] case, and thus fall within Article 16(1)(a) RPBA. Although it is unnecessary to decide the point, the board can see it could also be argued that in all the circumstances the late filing just before the OPs of new requests replacing those on file from the outset of the appeal was an abuse of procedure within Article 16(1)(e) RPBA.

[50] Turning to the late-filed documents D51 and D52, the [patent proprietor] argued that these supported its case on inventive step. The [patent proprietor] also suggested […] that document D51 was filed “in view of the board’s preliminary comments regarding inventive step” and […] that document D52 was filed “in view of the [opponent’s] submissions filed with letter of 26 May 2009”. The [opponent] argued that the relevance of the documents had not been established and that no explanation for their late production had been offered.

[51] The [patent proprietor’s] reliance on the board’s preliminary opinion leads to the same observation as in respect of the late-filed requests (see point [48] above): the board’s preliminary opinion raised no arguments or issues not already dealt with in the opposition proceedings so document D51 could, and to comply with Article 12(2) RPBA should, have been filed with the statement of grounds of appeal dated 17 December 2008. As regards the [patent proprietor’s] assertion that D52 was filed in response to the [opponent’s] reply of 26 May 2009, nearly four years earlier, this is in effect an admission of extremely late filing unaccompanied by any explanation why the document was not filed sooner. In the case of both documents there is no explanation why this evidence is so important that it should be admitted at the very last stage of the appeal proceedings. With respect to the [patent proprietor], the mere assertion that the documents support its case is otiose – it is axiomatic that any party considers that any item of evidence it filed supports its case just as it is self-evident that no party would file an item of evidence which did not support its case.

NB: Rare word of the day: otiose (meaning ‘futile’, ‘pointless’ …).

[52] It is clearly necessary for any party filing evidence in appeal proceedings after it has filed its grounds of appeal or reply to explain why it is doing so, if only because of the requirements of Article 13 RPBA and, at the risk of stating the obvious, that necessity is even greater when OPs have been appointed (see Article 13(3) RPBA). Thus, to file new documentary evidence one month before, or less than one month before, appointed OPs with no credible explanation why the evidence was not filed earlier is to run the same double risk of inadmissibility and costs mentioned above in relation to late-filed requests (see point [48]).

In the present case the [patent proprietor] actually underlined the inadequacy of its explanation by stating, in respect of document D51 in its letter of 6 February 2013, “The implications of this post-filed evidence will be explained during the oral hearing”. No such comment was made of document D52 in the [patent proprietor’s] later letter of 12 February 2013 but, equally, no explanation beyond a reference to the [opponent’s] reply of 26 May 2009 was offered.

[53] The board has no hesitation in finding this behaviour inequitable. The last-minute production of new evidence is not only discouraged by the rules of procedure (see Article 13(3) RPBA) but also inevitably causes additional work and cost for the party faced with it. In the present case, the absence of explanation, both of the evidence itself and of its late production, makes matters worse. It would always be unacceptable for a party to produce evidence without any explanation – unless conceivably its relevance is self-evident – why the evidence supports that party’s case. To produce evidence at the virtual end of the proceedings accompanied only by a statement that the explanation will be provided even later was not only discourteous but a clear, and apparently deliberate, attempt to frustrate the [opponent’s] preparation for the OPs. That was both an act prejudicing the efficient conduct of OPs and an abuse of procedure. In the board’s opinion, an apportionment of costs is appropriate under each of the provisions of Article 16(1)(a), (c) and (e) RPBA.

[54] The [patent proprietor’s] remaining argument against any apportionment of costs, that it would create a precedent by limiting the procedural options of parties, is unsustainable. There is no question of this case being a precedent in the sense of being the first of its kind (see again “Case Law”, 6th edition 2010, pages 740 to 763). Further, there is no question of inhibiting the future conduct of parties by limiting their procedural options which will remain exactly the same as before. Equally, in the future as before, parties must exercise their procedural options in such a manner that their conduct is not inequitable, otherwise they may incur orders for apportionment of costs. If the [patent proprietor’s] argument were correct, any party could behave as it wished without fear of any sanction in costs. That cannot be correct. The provisions of the law as to costs, like the provisions as to procedure generally, are designed to ensure fair procedural behaviour and the use of such provisions to sanction improper use of procedure should have no effect on the proper use of procedure by others in future.

[55] Therefore, the board has decided for reasons of equity to order an apportionment of costs so that the [patent proprietor] pays the [opponent’s] costs incurred by auxiliary requests 1 and 2 and document D51 filed with the [patent proprietor’s] letter of 6 February 2013 and document D52 filed with the [patent proprietor’s] faxed letter of 12 February 2013. Such costs will be limited as required by R 88(1) and Rule 16(2) RPBA.

Assessment of Costs

[56] Before the close of the OPs, the board and the parties discussed the procedure for fixing costs once an apportionment has been ordered. In this respect, the following is added for the parties’ information.

R 88 reads:
“(1) The apportionment of costs shall be dealt with in the decision on the opposition. Such apportionment shall only take into consideration the expenses necessary to assure proper protection of the rights involved. The costs shall include the remuneration of the representatives of the parties.
(2) The OD shall, on request, fix the amount of costs to be paid under a final decision apportioning them. A bill of costs, with supporting evidence, shall be attached to the request. Costs may be fixed once their credibility is established.
(3) A request for a decision by the OD may be filed within one month of the communication on the fixing of costs under paragraph 2. The request shall be filed in writing and state the grounds on which it is based. It shall not be deemed to be filed until the prescribed fee has been paid.
(4) The OD shall decide on the request under paragraph 3 without OPs.”
This rule superseded R 63 EPC 1973 and references to the “registry” of the OD no longer appear. In the board’s opinion, references in R 88 to “the OD” must, for the purposes of costs to be assessed following an order in opposition appeal proceedings, be read as references to the board of appeal.

It appears to the board that, since the apportionment has been dealt with in the present decision (see R 88(1)), a request to fix the costs, accompanied by a bill of costs and supporting evidence should be filed with the board, and the prescribed fee paid, by the [opponent] within one month of the deemed date of receipt of the communication notifying this decision. R 88(4) provides that there shall be no OPs. However, the board envisages offering the [patent proprietor] one month to comment on the request, bill of costs and supporting evidence before making a decision on the amount of costs.

This is one more decision where the Board repeatedly cites certain pages of the Case Law Book (“pages 740 to 763”). I am not a big fan of citing “the Book” because the reader willing to check the reasoning of the Board has to read many pages, and filter out the relevant information. (Dare I say that such a citation is often otiose?) I for one would appreciate if the Boards cited the relevant decisions reported in the Book. Anyway, citing the Book by indicating page numbers is even worse because the three language versions of the Book obviously do not have the same information on the same pages. For instance, pages 740 to 763 of the English version correspond to pages 835 to 860 of the French version. Citing the relevant paragraphs is clearly more user-friendly. In the present case, “pages 740 to 763” corresponds to the entire chapter VII.C.7 dealing with apportionment of costs.

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

The file wrapper can be found here.

Thursday 25 July 2013

T 1814/11 – More On Synergy


The patent proprietor filed an appeal against the decision of the Opposition Division to revoke its patent.

Claim 1 as granted read:
A fungicidal mixture, comprising

(1) 2-[2-(1-chlorocyclopropyl)-3-(2-chlorophenyl)-2-hydroxypropyl]-2,4 dihydro-[1,2,4]-triazole-3-thione (prothioconazole) of the formula I or its salts or adducts

and
(3) picoxystrobin of the formula Ill


or its salts or adducts
in a synergistically effective amount.
The Board had to examine whether this subject-matter involved an inventive step.

*** Translation of the German original ***


Problem

[2.2] In view of document D1 the problem to be solved is to provide an alternative synergistically effective fungicidal mixture based on prothioconazole.

Solution

[3.1] The proposed solution consists in the composition of prothioconazole and picoxystrobin claimed in claim 1.

[3.2] Considering the results presented in Tables 3 and 4 of the opposed patent, the Board assumes that the above mentioned problem was indeed solved.

[3.3] However, the skilled person starting from document D1 and trying to solve the problem defined in point [2.2] did not have any good reason to mix prothioconazole with picoxystrobin as mentioned in document D1. It is true that document D2 discloses that picoxystrobin has some advantageous properties […] with respect to other strobilurins such as e.g. azoxystrobin and kresoxim-methyl known from document D1, but the document does not mention mixtures containing picoxystrobin and having a synergistic effect at all. Moreover, synergistic effects are unpredictable, i.e. when, as in document D1, a combination of two specific compounds has a synergistic effect, this does not mean that such synergy may also be expected when one of them is modified as to its structure.  This can also be seen from the fact that document D1 discloses specific fungicides as constituents for the mixture (Mischungspartner) and not classes of fungicides.

Thus the combination of prothioconazole and picoxystrobin as a synergistic mixture is not obvious for the skilled person from the teaching of documents D1 and D2.

Documents D3 and D4, which have been disclosed in due time, concern a great number of fungicide mixtures containing picoxystrobin and one further active component, among which azoles […]. These mixtures are said to possibly possess a synergistic effect […]. However, these documents do not contain any further indications or examples in this respect. Moreover, prothioconazole is not among the listed active substances. Thus there is no indication for the skilled person that there could be a synergistic effect when prothioconazole and picoxystrobin are mixed.

[3.4] The [opponent] expressed the opinion that in view of the commercial success of several strobilurins […] and the improved properties of picoxystrobin with respect to the commercial strobilurins […] there was a clear indication for the skilled person to combine prothioconazole and picoxystrobin with reasonable chances of success.

This argument would be correct if the problem to be solved was merely to provide alternative fungicide mixtures. This is not the case here (see point [2.2]). The fact that picoxystrobin has properties that are improved over azoxystrobin and kresoxim-methyl […] does not allow to deduce that it also has a synergistic effect in a mixture with prothioconazole. Document D2 discloses experimental results relating to the activity of picoxystrobin in comparison with other known strobilurin derivates such as azoxystrobin and kresoxim-methyl, which are mentioned in document D1. Although the latter have a synergistic effect with prothioconazole […] this does not allow to draw the conclusion that picoxystrobin, despite its advantageous properties, will also have a synergistic effect when combined with prothioconazole.

[3.5] The [opponent] further argued that it was obvious for the skilled person to use compounds of the same class, i.e. strobilurins, and to obtain the claimed mixture by applying the principle of trial-and-error.

The Board does not fond this argument persuasive.

Fungicidal compounds belonging to the same class do, as a rule, possess similar modes of action (Wirkmechanismen) and/or possibly similar chemical structures. However, this does not mean that when certain fungicidal compounds of the same class have a synergistic effect when combined with a certain fungicidal compound, all or most compounds of this class also have a synergistic effect with this particular fungicidal compound. As a rule, synergy is not predictable […] and, therefore, cannot be ascribed to any mode of action and/or structure. In the present case, starting from document D1 and without any knowledge of the invention, the principle of trial-and-error invoked by the [opponent] would boil down to testing mixtures of different fungicidal compounds with prothioconazole, without it being predictable for the skilled person whether a mixture would indeed have a synergistic effect.

[3.6] The [opponent] has also stressed that according to the teaching of document D2 […] picoxystrobin was to be used in combination with other fungicides in different cross-resistant groups for controlling cereal diseases. This would be an incentive for the skilled person to combine picoxystrobin with other fungicides having a different mode of action.

However, the passage cited by the [opponent] refers to particular cross-resistant groups (i.e. combinations of strobilurins with Famoxadone and Fenamidone). Moreover, as stressed by the [patent proprietor] [this passage] refers to the resistance of certain pathogens to strobilurins in this context. At best the skilled person can understand this to mean that a combination of strobilurins with a fungicide could be advisable if they are to be used against these particular pathogens. The skilled person does not find in this paragraph an incentive to use picoxystrobin for solving the problem mentioned in point [2.2].

[3.7] Thus the subject-matter of claim 1 involves an inventive step. […]

The patent is maintained unamended.

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

The file wrapper can be found here.

Wednesday 24 July 2013

J 20/12 – Withdrawn And Not Pending


Here is another decision of the Legal Board concerning a decision of the Receiving Section (RS) not to treat an application as a divisional application. The applicant boldly tried to apply G 1/09 to a withdrawal.

The parent application had been unconditionally withdrawn on January 19, 2009, but on February 26, 2009, the appellant filed a request to correct this withdrawal on the grounds that an error had been made: it had intended to withdraw an entirely unrelated application. This request was ultimately denied by the Legal Board of Appeal (decision J 1/11), essentially because by the time the request for correction had been filed notice of the withdrawal had already been recorded in the European Patent Register (on February 6, 2009). Meanwhile, on March 10, 2009, that is, after the parent application had been withdrawn but while proceedings for correction of the withdrawal were pending, the appellant filed the divisional application to the withdrawn parent application. On October 27, 2011, the appellant was informed by the RS that the divisional application was not being processed as the parent application had been withdrawn. This view was confirmed by the decision of the RS of May 29, 2012, in which it was stated that, according to R 36(1) EPC, an applicant could only file a divisional application “relating to any pending earlier European patent application”. In the case at issue, the parent application was no longer pending as it had been unconditionally withdrawn.

The applicant argued that when an application is erroneously withdrawn (as was said to be the case for the parent application) R 139 allows for the correction of errors. As at the time of the filing of the divisional application it had not been finally established whether the request for correction would be allowed or not, the parent application should have been considered as still “pending”. In support of its view, the appellant relied on decision G 1/09, as in the present case not all legal remedies had been exhausted when the divisional application was filed. In contrast thereto, decision J 4/11 could not apply, as that decision dealt with a case where the application was “deemed to be withdrawn” rather than withdrawn by the appellant.

[1] The Board agrees with the appellant that the starting point of the legal analysis should be decision G 1/09. According to this decision, point [1] of the Reasons:
“… the amended version of R 36 which entered into force on 1 April 2010 is still based on the principle that a divisional application may be filed ‘relating to any pending earlier European patent application’.”
Point [3.1] of Reasons goes on to state that:
“It is common ground that the EPC does not contain a definition of the notion ‘pending European patent application’. In particular, the EPC does not define the points in time at which the pending status of an application begins and ends in all possible situations. An interpretation of the expression ‘pending European patent application’ is therefore necessary.”
As to this, according to point [3.2.4]:
“… a ‘pending (earlier) European patent application’ in the specific context of R 25 EPC 1973 is a patent application in a status in which substantive rights deriving therefrom under the EPC are (still) in existence.”
Point [4.2.1] then goes on to state that:
“A 67(4) EPC 1973 clearly indicates until when such substantive rights deriving from a European patent application are in existence if a patent is not granted. In particular, it provides that the European patent application shall be deemed never to have had the effects of provisional protection when it has been withdrawn, deemed to be withdrawn or ‘finally refused’. … Substantive rights of the appellant under A 67 EPC 1973 may therefore continue to exist after refusal of the application until the decision to refuse becomes final (rechtskräftig, passée en force de chose jugée). Third parties using the invention before the decision to refuse has become final incur the risk of becoming liable under national law based on A 67 EPC 1973.”
And, further, in point [4.2.3]:
“A 67(4) … is a self-contained provision indicating the point in time at which substantive rights conferred by a European patent application and therefore its pending status must end.
[4.2.4] From the above the Enlarged Board of Appeal (EBA) concludes that under the EPC a patent application which has been refused by the Examining Division (ED) is thereafter still pending within the meaning of R 25 EPC 1973 until the expiry of the period for filing an appeal and, on the day after, is no longer pending if no appeal is filed. The same conclusion applies to R 36(1) EPC 2000 both in its former and its current version.”

[2] The subject matter of decision G 1/09 was a divisional application filed after a decision refusing the parent application had been rendered, but before the appeal period had expired. According to decision G 1/09, such a decision only became final after the appeal period had expired without an appeal having been filed. The reason for this could be found in the wording of A 67(4), which refers to an application that has been “finally refused”. Only after the expiry of the appeal period could it be said that the application was finally refused. The EBA did not deal with the other two alternatives of the above provision, namely an application that had been withdrawn or was deemed to be withdrawn.

[3] Decision J 4/11 dealt with the case of a divisional application filed after the parent application was deemed to be withdrawn due to non-payment of the renewal fees. The Board in accordance with the above distinction made in A 67(4) noted that in such a case the withdrawal took place automatically on the occurrence of the relevant event (non-payment) and no decision of the Office was necessary to give effect to the withdrawal. Therefore, the case could be distinguished from the one in decision G 1/09 in that no adverse decision had been rendered. In such a case, the application was held to be no longer pending as of the date of the deemed withdrawal.

[4] In the present case the Board is faced with the third kind of situation referred to in A 67(4), namely where the application is voluntarily withdrawn. The present case can therefore be distinguished from those in G 1/09 and J 4/11 but the principles established by those cases can nevertheless be applied to the present case.

[5.1] As to the position immediately after the application was withdrawn and before any request for correction under R 139 was filed, the effect of the filing of the withdrawal was that the application was thereupon withdrawn. Such withdrawal took place without any action on the part of the Office. Prima facie, therefore, the application was thereafter no longer pending.

[5.2] In writing, the appellant argued that the effect of a request under R 139 was that the withdrawal was thereupon ex post facto rendered only provisional […], so that the application was then still pending until a final decision on the request.

[5.3] The logical consequence of this argument would be that an application would potentially remain pending ad infinitum after it was withdrawn, because there is no time limit placed on the right to make an application under R 139. The appellant did not maintain this position at the oral proceedings, but rather refined its argument by saying that an application should be considered pending at least in those cases where a request for correction was filed and where such request was not completely without merits.

This was said to be true for the present case by virtue of what the appellant asserted to be the somewhat conflicting case law relating to correction under R 139. It was said that the application for correction was certainly not completely without merits because until the decision of the Board of Appeal on the request (decision J 1/11) it was not clear that rectification was no longer possible where the notice of withdrawal had been recorded in the European Patent Register, as opposed to its being published in the European Patent Bulletin […]. The appellant did not take a position on the status of an application before any such request is filed or where no request for correction is filed at all.

[5.4] The Board would first remark that the argument appears to be without any legal foundation. It also does not deal with the position before a request for correction is made, nor where no such request for rectification is made at all, and so leaves these situations entirely open. Further, the distinction made is also wholly unworkable: there is no objective standard by which it can be judged whether a request for correction is “not completely without merits.”

[5.5] Turning rather to the substance of the point, as already noted, the decision G 1/09 links the question of whether an application is pending with the existence of “substantive rights” in the patent application.

[5.6] Decision J 4/11 dealt in detail with the issue of “substantive rights” in this context:
“[5] The question is thus whether substantive rights deriving from the grandparent application were still in existence when the parent application was filed. The EBA did not give any definition of the expression “substantive rights” in this context. The Board nevertheless extracts the following points from the EBA’s reasons:

(a) “Substantive rights” in this context include the provisional protection conferred after publication of the application by virtue of A 67(1), which in turn refers to the protection conferred by A 64. See point [4.2.1] of the Reasons. The combined effect of these two articles is to provisionally confer on an applicant the same rights in the designated Contracting States as would be conferred by a national patent granted in those States. The Board will refer to these rights as the A 64 rights.

(b) The EBA did not expressly say (and did not need to say) whether there might be other relevant types of substantive rights.

(c) A patent application involves two different aspects. On the one hand a patent application is an object of property as set out in A 71 to A 74, conferring on the applicant, inter alia, the provisional A 64 rights. On the other hand it involves procedural rights which the applicant is entitled to exercise by virtue of A 60(3) EPC 1973. The expression “European patent application” may therefore stand for substantive rights as well as for procedural rights of the applicant. See point [3.2.1] of the Reasons. Since R 25(1) EPC 1973 (see now R 36(1)) refers to “any pending patent application” and not to pending proceedings before the EPO, it is not relevant for the purposes of R 25(1) EPC 1973 whether proceedings are pending before the EPO. Pending proceedings cannot be equated with a pending application. See points [3.2.2] and [4.2.5] of the Reasons.

(d) A 67(4) provides for the point in time when the A 64 rights must end and thereafter are no longer still in existence. This is when, in the words of A 67(4), the application has “been withdrawn, deemed to be withdrawn or finally refused.” […]

The prima facie effect of a deemed withdrawal on the A 64 rights

[8] A 67(4) provides that a European patent application shall be deemed never to have had the effects set out in A 67(1) and (2) when it has been (a) withdrawn, (b) deemed to be withdrawn or (c) finally refused. The EBA in G 1/09 was concerned with the case of the refusal of an application by the ED: for the purposes of A 67(4), at what point in time is an application to be considered as “finally refused” where no appeal is filed against the decision refusing the application? The Board concluded that this is when the time limit for filing an appeal against a decision refusing the application expires, since it is at this point that the decision to refuse the application becomes final. The retroactive effect of a decision dismissing the appeal does not alter the pending status of the application. See points [4.2.1-2] of the Reasons. Up until this point a substantive right under the application therefore still subsists. This was sufficient to answer the question which had been referred to the EBA.

[9] The present Board is concerned with a different case, namely a deemed withdrawal of an application.

[10] A 67(4) provides that an application is deemed never to have had the effects provided for under A 67(1) and (2) when it is deemed to be withdrawn. The EBA took the position (point [4.2.3] of the Reasons) that A 67(4) is a self-contained provision indicating the point in time at which “substantive rights conferred by a European patent application and therefore its pending status must end.” […]  

[11] As to the point in time when this deemed withdrawal took place, A 86(3) EPC 1973 (see now A 86(1)) simply provides that if the renewal fee (and any additional fee) is not paid in due time, the application shall be deemed to be withdrawn. Although the applicant must be informed of the loss of rights (R 69(1) EPC 1973, see now R 112(1)) the withdrawal takes place at that point in time as a matter of law without any decision of the Office. As explained in G 1/90 [6], in such a case the loss of rights occurs on expiry of the time limit that has not been observed. See also G 4/98 [3.3].

[12] Prima facie, therefore, the A 64 rights under the grandparent application were no longer subsisting when the time for payment of renewal fee expired, which was before the date when parent application was filed.

The effect of the possibility (and the fact) of the filing of a request to grant re-establishment of rights

[13] If the Board were to accept the appellant’s arguments, which are based on an analogy with the situation of “final refusal” of an application, it would follow that an application would remain pending after it had been deemed to be withdrawn for as long as the period for making a request to grant re-establishment of rights continued to run. Further, if and when such a request was made, the application would remain pending at least until the date when the request for re-establishment was finally determined.

[14] By way, first, of a general remark, the wording in A 67(4) appears to the Board to have been chosen with care, particular the positioning of the word “finally”. In the case of a refusal of an application, the filing of an appeal will have the effect of suspending the effect of the order refusing the application (A 106(1)). It is logical therefore to speak of the “final” refusal of an application in this context, since the effect of the refusal of the application by the ED is suspended in the event of an appeal. In such a case the suspensive effect of an appeal is ended in the event of a decision dismissing the appeal, from which point the appealed decision retrospectively takes full effect. At the point of dismissal of the appeal, the application can be said to be finally refused and the decision of ED is made final.

[15] On the other hand, in a case where an application is deemed to be withdrawn under A 86(3) EPC 1973 for non-payment of a renewal fee it does not appear to the Board to be logical to speak of the “final” deemed withdrawal of the application. As already noted, the point in time when the application is deemed to be withdrawn is the point when the due time for payment of the renewal fee expires; the loss of rights occurs on the expiry of the time limit that has not been observed and, as such, is final in itself.”
[5.7] Thus far, the Board sees no difference between the case of an application deemed to be withdrawn due to the non-payment of fees and an application that has been voluntarily withdrawn by a communication from the applicant. In neither case is the withdrawal the result of a decision taken by the Office. In the case of a withdrawal, the Office simply complies with the instructions given by the applicant. It has to do so. Compliance with the applicant’s instructions does not amount to a decision that adversely affects the applicant, and consequently the latter cannot appeal against the action of the Office in carrying out the instructions. The applicant could only do so if the Office were to decide not to comply with its request. As with an application which has been deemed to be withdrawn (as in J 4/11), A 64 does not speak of a “final” withdrawal of an application, nor is it logical to do so. Consequently, the Board concludes that the rights conferred on the parent application according to A 67(4) prima facie came to an end at the moment of withdrawal of the application.

[5.8] The Board in J 4/11 went on to consider whether this result might be any different in the light of any special provisions under the EPC that somehow altered the result as provided for in A 67(4), in particular by providing that the filing of a request for re-establishment had the effect of reviving the application. It concluded that there were no such provisions and that a failed request for re-establishment also did not have such an effect. It is not in dispute that there are no provisions in the EPC expressly providing that the filing of a request for correction of a withdrawal has suspensive effect on the withdrawal.

[5.9] What the appellant in effect appeared to argue was that the possibility of requesting correction could be regarded as a substantive right in relation to the application that had been mistakenly withdrawn, since it meant that the appellant still had a right of redress and thus the withdrawal was not final. The issue of what amounted to a right of redress in this context was considered by the Board in J 4/11:
“[17] In G 1/09 [4.2.2] the EBA, when dealing with the issue of when an application should be considered to be (finally) refused, referred to and relied on the jurisprudence of Contracting States, pursuant to which “decisions do not become final until the expiry of the respective period for seeking ordinary means of legal redress.” In effect, the appellant argues that the right to seek re-establishment is a right of redress, so that while the period for seeking such redress against the deemed withdrawal of the application was still running, the deemed withdrawal was not a final withdrawal. The Board considers that this is not a correct analysis. First, the argument overlooks the distinction, already discussed, between a refusal, which requires a decision by the Office which is then challengeable by way of an appeal, and a deemed withdrawal, which takes place automatically by operation of law. The above statements by the EBA in G 1/09 were made in the express context of a decision by a department of first instance refusing an application: see point [4.2.2] of the reasons. Second, the Board considers that the concept of redress is appropriate only in the context of correcting a wrong. Thus while it is appropriate to speak of seeking redress against an allegedly wrong decision of the Office refusing an application, it is not appropriate to speak of seeking redress against the deemed withdrawal of an application. A person requesting re-establishment of rights does not seek correction of a wrong, i.e. allege that the deemed withdrawal was wrong as a matter of law. Rather he requests that he should be excused the consequences of the withdrawal in the particular circumstances of the case. In contrast, the procedure under R 69 EPC 1973 (now R 112) by which a person can challenge a notice of loss of rights […] is a process for seeking ordinary means of legal redress against an alleged wrong of the Office. This conclusion appears to be fully be consistent with the position under French, German and Swiss national law, as summarised in D1, points 4.1 to 4.3.”
[5.10] The Board thus came to the conclusion that the possibility of re-establishment of rights did not alter the finding that an application which has been “deemed to be withdrawn” under A 67(4) was no longer pending as of the time it was deemed to be withdrawn. The Board considers that for the same reasons the possibility of making a request for correction is not a means of legal redress and that a withdrawn application cannot be considered as still pending merely where a request for correction has been filed. First, whereas a refusal requires a decision by the Office which is then challengeable by way of an appeal, a withdrawal takes place by virtue of the act of the applicant. Second, a person requesting rectification of a withdrawal does not seek correction of a wrong, i.e. allege that the withdrawal was wrong as a matter of law. Rather he requests that he should be relieved from the consequences of the mistaken withdrawal in the particular circumstances of the case.

[5.11] In conclusion, from the wording of A 67(4) (“withdrawn” in contrast to “finally refused”), and the further clarification given in decision J 4/11 as cited above, it can be concluded that an application is no longer pending as from the moment after it has been withdrawn. This is not altered by the possibility of filing a request for correction under R 139, nor by the actual filing of such a request. In other words, an application is not pending because a correction of a withdrawal under R 139 has been requested.

[5.12] The mere possibility that a filed request for correction might be successful does not lead to a different conclusion. Any result of a potential decision to grant correction comes only into effect as from the time of such decision and for the future.

In J 3/01 the Board said:
“… the so-called retrospective effect of a correction under R 88 EPC [1973] does not cancel previous procedural events, but only causes the document corrected to be considered from the time of correction and for the future as filed ab initio in the corrected version. Correction under R 88 EPC [1973] does not reverse the effect of decisions already taken on the basis of the uncorrected document and does not re-open a procedural phase already terminated … In other words, a procedural loss of right only indirectly caused by the incorrect document will not be remedied by a later correction of the document pursuant to R 88 EPC [1973]. This principle also characterises the functional and essential difference between a correction under R 88 EPC [1973] on the one hand and restitutio in integrum pursuant to A 122 on the other hand.”
Also decision J 6/02 emphasises that R 139 only concerns errors in documents and that correction under the rule does not allow previous procedural effects to be set aside. Rather, it only causes the document corrected to be considered from the time of correction and for the future as filed ab initio in the corrected version, as is set out in great detail in point [15] of the Reasons:
“[15] When regarding a request for correction under R 88 the Board has furthermore to consider the limited function of this Rule in the system of legal remedies provided for in the EPC (see above point 4, functional restriction). As already mentioned above, R 88 concerns the correction of errors in documents filed with the EPO. According to the first sentence a correction is limited to linguistic errors, errors of transcription and mistakes in any documents filed with the EPO.

Therefore a correction under R 88 is a procedural means available to rectify misleading information caused by such an error. The established case law of the Boards of appeal also allows correction under R 88 of the content of a document filed with the EPO even if the correction leads to an amendment or to a revocation of the procedural declaration or act relative to this document, whereby rights of the party concerned can arise or a waiver of rights can be rescinded.

But such a correction cannot have any effect on the procedural situation that has already ensued in direct or indirect consequence of a written error by failure to meet a time limit during the pending proceedings. In the present case, appellant’s request for correction is aimed at cancelling the legal effect under R 108(2) i.e. at reversing the legal effect that the designation of France was deemed to be withdrawn since there was no designation fee dedicated to France and no additional fee was paid within the period of grace under R 85(a) by 20 December 2000.

To cancel procedural effects after failure to meet a time limit would be to apply R 88 beyond its clear and unambiguous wording (cf. J 25/01) and would violate the scope of application of A 122 which stipulates specific requirements for grant of re-establishment of rights. This conclusion is confirmed by A 122(5) which strictly forbids re-establishment of rights after failure to meet the time limit under inter alia A 79(2). A 122 provides for a re-establishment of rights where the applicant or proprietor of a European patent was unable to observe a time limit vis-à-vis the EPO and in consequence a loss of rights occurred. If the requirements of this provision are met – other than by a correction under R 88 – the procedural effect is cancelled, and the former procedural situation reinstated, so that the applicant’s rights are re- established. Thus, such a request for restitutio in integrum is the appropriate means to restore the procedural situation before the failure to meet a time limit. But according to A 122(5) restitutio in integrum is excluded after failure to meet a time limit under A 79 or R 104(1)(b) in conjunction with R 85a (see G 3/91). In other words, the remedy of restitutio in integrum is not available to redeem the applicant’s loss of rights that has occurred as a consequence of the failure to pay the designation fee for France at the end of the period of grace under R 85a(2) on 20 December 2000.

The strict provisions of A 122(5) must not be circumvented by the so-called retroactive effect of a correction under R 88(1). The conclusion that the so-called retroactive effect of a correction under R 88 does not set aside the previous procedural effects, but only causes the document corrected to be considered from the time of correction and for future as filed ab initio in the corrected version is already stated in the Board’s decision J 3/01 [10]. Furthermore in decision J 27/96  the Board stated that a correction by the addition of a designation does not mean – despite its ab initio effect – that the applicant is reinstated into the procedural phase where designations can be made and fees paid, meaning that the whole procedure of that phase becomes available to the applicant again. The Legal Board stressed that a correction of a mistake is an isolated procedural measure and not a case of re- establishment into a defined procedural phase as a whole. The same conclusion was reached by the Legal Board in its decision J 21/84 (see also T 152/85).”
In the present case no correction has been granted. Hence the request for correction had no effect whatsoever on the status of the withdrawn parent application.

[5.13] It is not necessary for the Board to decide what the position would have been if the request for correction pertaining to the parent application had been allowed.

[5.14] Contrary to the view taken by the appellant, it is immaterial in this respect whether the withdrawal was intended to apply to a different application, or whether the representative misinterpreted the appellant’s instructions in some other way. The Board cannot see any provision or case law that would support the appellant’s point of view in this respect. Nor did the appellant cite any. A document such as a withdrawal must be construed objectively and its effect cannot vary according to the subjective intentions of its author.

[6] In the absence of a pending parent application, the appellant was not entitled to file a divisional application. The decision under appeal was therefore correct in arriving at this result, and accordingly the appeal must be dismissed.

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