T 1340/10 – Last Minute

In this case the opponents appealed against the decision of the Opposition Division (OD) – dated April 19, 2010 – to maintain the opposed patent in amended form.

At the opening of the oral proceedings, which took place on May 22, 2013, the patent proprietor requested the board to remit the case to the first instance because the contested decision contained severe procedural deficiencies. It pointed out that the decision contained no statement as regards the opposition ground under A 100(b).

The appellants contested both the admissibility and allowability of the late-filed auxiliary request. They further requested that the case not be remitted to the first instance, in view of the duration of the proceedings.

What did the Board do with this request?

[1.1] Under the provisions of R 111(2), appealable decisions must be reasoned. The ground underlying this requirement is closely linked to the principle of the right to be heard laid down by A 113, which means that the parties are able to determine whether their arguments have been duly considered even if not accepted. This requirement is also clearly related to the provisions of A 108 insofar as the reasoning developed by the deciding body constitutes the basis for the grounds of appeal.

[1.2] In the present case, it is manifest that the contested decision does not contain any decision, let alone any reasoning, relating to the ground for opposition based on A 83 raised by the opponents.

[1.3] The appellants objected to the admissibility of this request on the grounds that it was filed late and by a party which had not appealed. However, as a matter of principle, a substantial procedural violation, due to its very nature, may be raised at any stage of the appeal proceedings. Although the respondent waited until the last minute to introduce this objection, the procedural mistake is so obvious that the appellants cannot claim to be surprised. Obviously, the representatives were aware of this deficiency in the contested decision (see e.g. statement of grounds of appeal from opponent 2; page 3, point 3).

[1.4] It is well-established case law that a party may, during appeal proceedings, file any kind of request aiming at the maintenance of the result obtained at the first-instance stage (cf. Enlarged Board of Appeal decisions G 9/92 [12] and G 4/93 [1]). An objection based on a severe procedural violation is thus not excluded. The request is therefore admissible.

[1.5] As to its allowability, as already stated above, the lack of any reasoning, let alone an explicit decision, relating to the objection based on A 100(b) cannot be disputed. The minutes of the oral proceedings shows that a debate took place on this issue, contrary to the respondent’s initial assertions. The lack of substantiation amounts to a substantial procedural violation which justifies that the decision be invalidated.

[1.6] The board is not satisfied that the other grounds cited as procedural violations are such as to affect the validity of the contested decision. It is established case law of the boards of appeal that reasoning which is not sufficiently developed and thus not convincing enough cannot be regarded as a substantial procedural violation. The same applies to a mistaken evaluation of a piece of evidence or to a wrong conclusion drawn on the basis of the documents on file. This is also true where an error would not have led to a different outcome of the proceedings (see in particular T 144/94 [4]; T 12/03 [4.5]; T 17/97 [8.2]).

[1.7] As to the request for remittal to the first instance, under the provisions of Article 11 RPBA the board must remit the case to the department of first instance if fundamental deficiencies are apparent, unless special reasons present themselves for doing otherwise.

In the present case, considering that the application was filed on 5 October 2001 and that the opposition proceedings started on 4 October 2007, the board is of the opinion that a remittal is not appropriate because the length of the procedure demands that a final decision be reached without delay. Moreover, the board notes that, as regards the procedural violation, the respondent could have raised its concerns at the beginning of the appeal phase, which could have led to speedier prosecution. Therefore, the request for remittal is rejected.

The patent was finally revoked.

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

The file wrapper can be found here.

T 1599/09 – Pump It Up

This is another examination appeal. The Examining Division (ED) had refused the application as contrary to A 53(c).

Claims 1 and 10 of the main request before the Board read:

1. A method of controlling the enabling of an enteral feeding pump for which a feeding set having an interlock device is adapted to be inserted into a recess of the enteral feeding pump, said method comprising:

inserting the interlock device into the recess of the enteral feeding pump;

emitting electromagnetic radiation in a direction for striking the inserted interlock device; and

detecting at least a portion of the electromagnetic radiation striking the interlock device when the interlock device is properly inserted in the pump recess;

such that operation of the enteral feeding pump to pump nutrient liquid in the feeding set in response to the detected electromagnetic radiation is enabled.

10. The method as set forth in claim 1, wherein emitting electromagnetic radiation comprises operating a first electromagnetic radiation source and wherein detecting the electromagnetic radiation striking the interlock device comprises operating a first electromagnetic radiation detector, and further comprising disabling operation of the enteral feeding pump in response to the first detector detecting electromagnetic radiation emitted by a source other than the first source.

The Board came to the same conclusion as the ED:

[2] Claim 1 […] comprises the feature “operation of the enteral feeding pump to pump nutrient liquid in the feeding set in response to the detected electromagnetic radiation is enabled”. Besides encompassing numerous embodiments where the pump is merely put in a state where it is permitted to operate […], this feature also encompasses embodiments where the pump is actually operated. This becomes evident from the description of the sixth embodiment of Figure 11 […] where it is stated […] that “the controller 77 will sense a “SET LOADED” condition and initiate operation of the pump” [emphasis added]. Further on, it is stated that “[d]uring operation of the pump, ... the safety interlock status is continuously monitored and if the status changes from “SET LOADED” TO “FAULT”, the controller will stop operating the pump” [emphasis added]. Similarly, in the description of the fifth embodiment of Figure 9, […] it is stated […] that the IR detector 239 “sends a signal to the controller to disable operation of the pump” [emphasis added]. Disabling operation of the pump is also part of dependent claims 10 and 12. In the Board’s view, this means that the pump, being in a state where it pumps fluid, is directly set into a state where it does not pump any more, i.e. it is switched off. It is not disclosed in this context that there are any intermediate steps between these two states. With regard to the output filtering 1418 referred to by the appellant, it is explicitly mentioned […] that such output filtering can be omitted. Accordingly, in view of dependent claims 10 and 12 and the cited passages of the description, claim 1 encompasses embodiments where the enteral feeding pump is actually operating to pump nutrient liquid.

From the beginning of paragraph [0035] it becomes clear that the feeding set 5 (comprising the safety interlock device mentioned in claim 1) comprises tubing providing a fluid pathway between a source of fluid and a patient, i.e. the nutrient liquid in the source of fluid and in the tubing is in direct connection to the patient. Accordingly, the operation of the pump results in nutrient liquid being pumped into the patient. It follows that there is a functional interaction with the patient, having a direct effect on his or her treatment. In this respect, the present situation is different from that considered in the decisions T 245/87, T 329/94 and T 238/06, referred to by the appellant.

Enteral feeding is used to provide nutrition to patients who cannot obtain nutrition by mouth or are unable to swallow safely. Such patients are suffering from an incapacity or disease. Even though enteral feeding does not cure the underlying cause, it clearly alleviates and lessens the symptoms thereof. It further prevents malnourishment. According to the established case law of the EPO (“Case Law”, 6th edition 2010, I.B.4.4.1, first two paragraphs), the meaning of the term “therapy” is not restricted to curing a disease and removing its causes. It also includes in particular symptomatic and prophylactic therapy. Accordingly, enteral feeding is considered to fall under the meaning of the term “therapy”. The question of whether or not the nutrition fluid also comprises medicine as mentioned at the beginning of paragraph [0002] dealing with the background of the invention can thus be left aside.

The appellant’s argument that the patient can operate the enteral feeding pump himself, without a medical practitioner being involved, is not decisive with respect to the exception clause of A 53(c). In G 1/04 [6.3], it is clearly stated that “whether or not a method is a diagnostic method within the meaning of A 52(4) EPC [1973] should neither depend on the participation of a medical or veterinary practitioner, by being present or by bearing the responsibility, nor on the fact that all method steps can also, or only, be practised by medicinal or non-medicinal support staff, the patient himself or herself or an automated system”. This finding is also applicable to therapeutic methods. It is noted that many forms of medicaments, e.g. in the form of tablets or pills, can be administered by the patient himself.

As stated at the beginning of G 1/07 [4.1], “[i]t is established in the jurisprudence of the boards of appeal that a claim encompassing an embodiment which is excluded from patentability under now A 53(c), then A 52(4) 1973, cannot be left unamended”. Since claim 1 of the main and the first auxiliary requests encompasses embodiments falling under the exception clause of A 53(c) as explained above, these requests cannot be allowed.

The Board refused to refer certain questions to the Enlarged Board and then considered the third auxiliary request claim 1 of which read:

1. A method of controlling the enabling of an enteral feeding pump for which a feeding set having an interlock device is adapted to be inserted into a recess of the enteral feeding pump, said method comprising:

inserting the interlock device into the recess of the enteral feeding pump;

emitting electromagnetic radiation in a direction for striking an the inserted interlock device inserted into the recess of the enteral feeding pump; and

detecting at least a portion of the electromagnetic radiation striking the interlock device when the interlock device is properly inserted in the pump recess;

such that operation of the enteral feeding pump to pump nutrient liquid in the feeding set in response to the detected electromagnetic radiation is enabled wherein the method does not include the step of controlling the operation of the enteral feeding pump to pump nutrient liquid. (amendments with respect to claim 1 of the main request are highlighted)

The Board considered the A 53(c) objection to have been overcome by this amendment:

[4] […] Since embodiments in which the pump is actually operated, thus being in functional interaction with the patient, are no longer encompassed, the claimed subject-matter does not fall under the exception clause of A 53(c).

Since the fulfilment of the further requirements of the EPC has not yet been examined, the Board finds it appropriate to remit the case to the ED for the continuation of the examination procedure (A 111(1)).

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The file wrapper can be found here.

T 270/11 – Trademark Trouble Et Al

This is an examination appeal.

*** Translation of the German original ***

The Board first dealt with the main request, claim 1 of which read:

Cosmetic preparation comprising a combination of

(a) a copolymer based on the monomers N-vinylpyrrolidon (VP), N-vinylimidazole (VI), methacrylamide (MAM) and quaternised N-vinylimidazole (QVI);

(b) at least one non-ionic polymer;

(c) cetyltrimethylammonium chloride (cetrimonium chloride; CAS 112-02-7).

[2.1] The Examining Division (ED) noted in the impugned decision that the subject-matter of claims 1 and 9 lacked novelty over the disclosure of documents D2, which belonged to the state of the art pursuant to A 54(3).

[2.2] The Board endorses this argument and the conclusion of the ED. Document D2 […] discloses examples of “Styling Mousse 3” and “Styling Mousse 4”, respectively, i.e. SM24, SM25, SM26, SM29, SM30, SM31, SM32, SM35, SM36, SM37, SM40, SM41, SM42, and SM43, each of which comprises a copolymer based on the monomers N-vinylpyrrolidon (VP), N-vinylimidazole (VI), methacrylamide (MAM) and quaternised N-vinylimidazole (QVI), i.e. the copolymers S2, S3, S4, S7, S8, S9, and S10, as well as a non-ionic polymer, i.e. hydroxyethyl cellulose, and cetyltrimethylammonium chloride. Thus all the features of claims 1 and 9 of the main request are disclosed in document D2.

[2.3] The appellant argued that the subject-matter of claim 1 was novel because the composition of preparations such as “Styling Mousse 4” was not disclosed directly and unambiguously in document D2 because it contained the product Dow Corning 949®Cationic the composition of which was not unambiguous. An ambiguous prior art document could not destroy the novelty [of the claimed subject-matter].

The Board does not find this argument persuasive because the exact composition of the product Dow Corning 949®Cationic in the examples “Styling Mousse 3” and “Styling Mousse 4” of document D2 is not relevant for the question of whether present claim 1 is novel. The respective examples clearly contain all three components (a), (b), and (c) of the claimed preparations. As present claim 1 is “open”, i.e. may contain components other than (a), (b), and (c), it is irrelevant what the respective examples of document D2 may contain in addition to that.

[2.4] Thus document D2 discloses all the features of claims 1 and 9 of the main request. Therefore, the Board comes to the conclusion, for the above reasons, that the subject-matter of claim 1 lacks novelty within the meaning of A 54(3).  

The Board then discussed auxiliary request 1, claim 1 of which contained a disclaimer:

Cosmetic preparation comprising a combination of

(a) a copolymer based on the monomers N-vinylpyrrolidon (VP), N-vinylimidazole (VI), methacrylamide (MAM) and quaternised N-vinylimidazole (QVI);

(b) at least one non-ionic polymer;

(c) cetyltrimethylammonium chloride (cetrimonium chloride; CAS 112-02-7),

with the exception of recipes containing:

2.00% by weight of cetrimonium chloride;

7.00% by weight of Polyquaternium-46;

0.1-1% by weight of a copolymer based on the monomers N-vinylpyrrolidon (VP), N-vinylimidazole (VI), methacrylamide (MAM) and quaternised N-vinylimidazole (QVI) in a ratio of (60/5/30/5), (55/5/35/5), (55/8/29/8), or (55/10/29/6);

0.20% by weight of ceteareth-25;

0.50% by weight of panthenol;

0.05% by weight of Benzophenon-4;

0.20 % by weight of Dow Corning 949®Cationic;

15.00 % by weight of ethanol (96%);

0.20 % by weight of hydroxyethyl cellulose;

6,00 % by weight of propane/butane;

ad 100 % by weight of water;

which are adjusted to a pH of 5 to 6 by adding lactic or phosphoric acid. (my emphasis)

Clarity of the claims (A 84)

[3.1] The ED noted in the impugned decision that the subject-matter of claim 1 was not clear, because of the use of the trademark “Dow Corning 949®Cationic” in the disclaimer.

[3.2] A 84 in connection with R 43(1) requires the claims to be clear and to define the matter for which protection is sought in terms of the technical features of the invention. This requirement ensures that the public is not left in the dark as to which subject-matter is encompassed by the claims, and which is not. The Board is of the opinion that it follows from this principle of legal security that claims are to be considered as lacking clarity within the meaning of A 84 if they do not allow to draw that distinction (see T 337/95 [2.2-5]). Claims that contain an unclear technical feature, however, cause confusion as to the subject-matter that is actually encompassed by the claims. Because of this lack of legal security such claims, therefore, are unclear within the meaning of A 84. This is all the more true if the unclear feature is essential for distinguishing the claimed subject-matter from the state of the art (see T 728/98 [headnote 1]).

[3.3] In the present case claim 1 contains the trademark “Dow Corning 949®Cationic” in a disclaimer that has been introduced in order to restore novelty over prior art pursuant to A 54(3), i.e. document D2 […]. According to the established case law of the Boards of appeal, however, the use of a trademark is to be considered as unclear because it is not certain that the meaning of the trademark will remain unchanged until the expiration of the patent (see interlocutory decision T 762/90 [4.1.1]). As in the present case [the appellant] has not filed any evidence to the contrary, the Board endorses the argumentation of the ED according to which the trademark “Dow Corning 949®Cationic” corresponds to a blend that could be varied at any time. Thus this trademark has no clear-cut meaning, nor does the subject-matter of claim 1.

[3.4] The Board is not persuaded by the submissions of the appellant in favour of the clarity of claim 1, for the following reasons:

[3.4.1] The appellant referred to decision T 623/91 in which a composition referring to a trademark was excluded by means of a disclaimer without infringing A 84.

However, in the case underlying the cited decision [the patent proprietor] had provided evidence (see point [2.1] of the reasons) that in all likelihood a case of a change of the ranges of the corresponding chemical composition would lead to a change of the trademark. In the present case, however, the appellant has never submitted such an argument, and the Board has no reason to assume that the meaning of the trademark Dow Corning 949®Cationic would remain the same until the expiration of the patent.

[3.4.2] The appellant also submitted that the use of this trademark in claim 1 of the auxiliary request should nevertheless be allowed because otherwise it was not possible to exclude the novelty destroying compositions of document 2 by means of a disclaimer.

However, there is no right to the use of a disclaimer in a claim. A disclaimer may be allowable if it inter alia serves to re-establish novelty by distinguishing a claim over a prior art document under A 54(3), but it must meet the requirements of clarity and conciseness of A 84  (see G 1/03 [headnotes II.1 and II.4]). Among other things, this means that a disclaimer is not allowable if the necessary limitation can be expressed in simpler terms in positive, originally disclosed features in accordance with R 43(1), first sentence (see G 1/03 [3, penultimate paragraph]). In the present case novelty can indeed be re-established by positive features (see e.g. claim 1 of auxiliary request 2, point [4] below).

[3.5] As for the above reasons the technical feature “Dow Corning 949®Cationic” lacks clarity, this expression causes confusion as to which subject-matter is actually encompassed by the claims, and which is not. Because of this lack of legal security claim 1 does not comply with the requirement of clarity pursuant to A 84. Thus auxiliary request 1 of the appellant cannot be allowed.

So the Board finally discussed the second auxiliary request, claim 1 of which read:

Cosmetic preparation comprising a combination of

(a) a copolymer based on the monomers N-vinylpyrrolidon (VP), N-vinylimidazole (VI), methacrylamide (MAM) and quaternised N-vinylimidazole (QVI);

(b) at least one non-ionic polymer chosen from: the group of homopolymers of vinylpyrrolidon or vinylcaprolactam, the group of copolymers of vinylpyrrolidon and vinyl acetate, the group of terpolymers of vinylpyrrolidon, vinyl acetate and propionate, the group of polyvinyl caprolactam, polyvinylamids, the group of copolymers of vinylpyrrolidon and dimethylaminoethyl methacrylate, the group of terpolymers of vinyl-caprolactam, vinylpyrrolidon and dimethylaminoethyl methacrylate, the group of terpolymers of vinylpyrrolidon, vinylimidazole and Methacrylamide or the group of terpolymers of vinylpyrrolidon, vinylimidazole and vinyl caprolactam;

(c) cetyltrimethylammonium chloride (cetrimonium chloride; CAS 112-02-7). (my emphasis)

Novelty

[4] The Board does not see any reason to diverge from the positive decision of the first instance as to the novelty of the subject-matter of auxiliary request 2. As a consequence of the listing of the non-ionic polymers (b) the subject-matter of auxiliary request 2 is novel over the disclosure of document D2 because this document does not disclose these particular polymers (b) in combination with the copolymer (a) and cetyltrimethylammonium chloride (c). The subject-matter of auxiliary request 2 is novel over the disclosure of document D1 because the latter does not disclose cetyltrimethylammonium chloride.

Inventive step and remittal

[5.1] When assessing inventive step the ED used the problem-solution approach. At first, this approach consists in determining the closest prior art and the objective technical problem with respect to the latter, which is solved over the entire scope of claim 1. When doing so, it is necessary to assess the technical results or effects, respectively, which are obtained by the claimed invention over the determined closest prior art (see e.g. T 1/80 and T 248/85 and Case Law, 6^th edition, 2010, Section I.D.2(c)).

[5.2] However, the ED refused to take into account the comparative trials of the appellant for the formulation of the objective technical problem because they concerned a teaching that could not be derived from the original application, i.e. that the use of cetyltrimethylammonium chloride was related to improved foam properties. Moreover, it was not possible to derive from the original application that cetyltrimethylammonium chloride was “an essential feature” of the claimed preparation, in particular because other embodiments had been described as “advantageous according to the invention” (“erfindungsgemäß vorteilhaft”).

[5.3] However, the problem-solution approach does not require the application to describe which feature is responsible for precisely which advantage or technical effect, respectively (see e.g. T 818/93 [5.2, 4^th paragraph]). In order to comply with the requirement of inventive step all that is needed is that for the skilled person the claimed subject-matter results from the state of the art in a way that is not obvious (naheliegend) (A 56). It is common practice to incorporate features taken from the dependent claims or from the description into an independent claim in order to make its subject-matter patentable and to use the effects and advantages related to those features as a basis for a (re)formulation of the technical objective (see e.g. T 39/93 [5]). There is no provision according to which the part of the originally claimed subject-matter which is considered to be patentable at the end of the examination has to be particularly highlighted (hervorgehoben) or described as an essential feature of the invention. (NB: I think it is clear what the Board intended to convey in the last sentence, but as it stands it is weird.)

[5.4] In the present application all disclosed embodiments are said to be according to the invention. In response to the objections raised by the ED it became necessary to limit the claimed subject-matter to a particular embodiment, i.e. preparations containing cetyltrimethylammonium chloride, in order to re-establish novelty and inventive step. Whether this limited embodiment is particularly highlighted as such in the application and whether other embodiments have been disclosed to be “advantageous according to the invention” is irrelevant for the assessment of its inventive step.

[5.5] Before the ED the appellant formulated the technical objective with respect to the closest prior art to be the definition of cosmetic preparations having a more stable foam with smaller bubbles. This objective is mentioned almost literally in the original application […]. As evidence for the successful solution of this problem by the preparations according to the claims containing cetyltrimethylammonium chloride the appellant has referred the first instance to comparative trials, which the ED has not taken into account. However, in order to determine the objective technical problem, it is necessary to assess the technical results or effects, respectively, which are obtained by the claimed invention over the determined closest prior art (see point [5.1] above).

[5.6] Thus [the Board] notes that the first instance has not yet completely examined [the application] on the basis of the principles developed by the Board, i.e. by determining the objective technical problem and its solution. As a consequence of this incorrect application of the problem-solution-approach the inventive step analysis is based on an error, i.e. the comparative trials D3 as well as V1 and V2 filed on September 7, 2007, and September 24, 2010, have not been taken into account in the determination of the objective technical problem over document D1. As a consequence it is necessary to remit the case to the first instance for further examination.

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

The file wrapper can be found here.

T 734/12 – Speeding Up

In this decision the Board made some interesting statements on the patent proprietor’s request for accelerated proceedings.

The request was based on three arguments: the possibility of remittal; the suggestion that the decision under appeal which turned on novelty related to an important point of law the resolution of which might take additional time; and the commercial and medical importance of the patented and approved treatment for which the appellant needed certainty as soon as possible, this being emphasized by the opponents’ plans to copy the patent proprietor’s approved indication and dosing regimen using their biosimilars.

[2] In the board’s opinion the reasons advanced by the [patent proprietor] for accelerating the appeal proceedings […] did not in themselves justify acceleration. As regards possible remittal, many appeals arise from decisions on one point only and thus include the issue whether or not to remit if successful. As regards a possibly important point of law, the board was not satisfied that there was such a point but, even if there was, it did not accept that this would necessarily require additional time, there being already a considerable case law on the question which criteria define a new patient subgroup.

[3] As regards the [patent proprietor’s] commercial significance argument, many if not all patentees consider their patents to be of commercial significance and, if that were a criterion for acceleration, it would be impossible for the board to decide which are of such importance as to merit acceleration and which not. That is doubtless one reason why acceleration has been acknowledged as appropriate when infringement proceedings are threatened or pending. The [patent proprietor] however alleged only planned copying by use of biosimilars and not that any of the opponents had infringed or were about to infringe, let alone that infringement proceedings were pending or even contemplated.

[4] However, it was clear to the board that there was a substantial measure of agreement between the parties on an early resolution of the issues […]: of the four parties, three agreed to acceleration and the fourth did not object. Such agreement is not only relatively rare but must be seen against the background of the current length of the board’s list of cases. While it gives the board no pleasure to say so, four years is currently the average time taken to dispose of pending appeals and parties filing new appeals are now being warned routinely by the board that they may expect their appeals to occupy four years. If in a minority of cases, both or most or all parties are agreed that their case should be expedited, then the board should be willing to do so. If this means that such a minority of cases thereby overtake the majority of cases where there is no such agreement, and that the list of pending cases is thereby divided into two lists of expedited non-expedited cases, then that will be a proper reflection of party disposition. Further, the public has an interest in the early resolution of disputes as to the existence or extent of a patent monopoly and it is logical to assume that a dispute in which all the parties agree to an early resolution are those which may affect the public most.

[5] Thus the board considered that in all the circumstances of the case the interests of the parties and of the public would best be served by an expedited procedure and by dealing with all outstanding issues in the present appeal proceedings. Accordingly oral proceedings were appointed for an early date in the board’s schedule and, since not all parties had presented written submissions on all outstanding issues, the board made directions intended to bring all the parties’ submissions into the same state of preparedness […].

NB: This decision also has some paragraphs that might be of interest to colleagues interested in novelty in the medical realm (new patient group; points [22-29] of the reasons).

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

The file wrapper can be found here.

T 1670/07 – We Don’t Buy It

This is an examination appeal.

Claim 1 of the main request before the Board read:

A method of facilitating shopping with a mobile wireless communications device (12) to obtain a plurality of purchased goods and/or services from a group of vendors (14) located at a shopping location (16) comprising:

communicating from the mobile wireless communications device with at least one server (18) a selection of two or more goods and/or services to be purchased by a user of the mobile wireless communications device on or before the user shops at the shopping location;

the at least one server, in response to information stored therein regarding vendors located at the shopping location and the goods and/or services offered by the vendors and the selection of the plurality of goods and/or services to be purchased by the user, causing at least an identification of the vendors from which available ones of the two or more goods and/or services may be purchased and the available ones of the two or more goods and/or services to be transmitted to the mobile wireless communications device; and

the mobile wireless communications device providing to the user an identification of the available ones of the goods and/or services to be purchased and an itinerary (120) of the user setting forth at least a choice of an order in which the user visits the identified vendors to obtain the goods and/or services to be purchased wherein the itinerary is a function of at least one profile of the user.

The Board found this claim to lack inventive step. The decision is interesting because the Board identifies three fallacies related to cases where inventions mix technical and non-technical features.

[4] It is common ground that claim 1 of the main request differs from D1 in that the user can obtain goods from a plurality of vendors located at the shopping location and in that the user is provided with an itinerary with the choice of an order to visit the identified vendors, the itinerary being a function of a profile of the user.

[5] The examining division considered that obtaining goods from a plurality of vendors was not technical and was not relevant for assessing inventive step […]. The problem was seen to be how to provide a technical means to optimise an itinerary […]. By including the feature of the itinerary in the problem, it appears that the division must have considered that it did not contribute to inventive step, i.e. was also non-technical. The solution of the provision of the choice of an order of visiting vendors and making the itinerary a function of a user profile were considered to be obvious […].

[6] However, the Board goes further than the examining division and does not consider that the features of providing a choice of an order of visiting vendors and making the itinerary a function of the user profile have any technical effect either. In the Board’s view, the overall effect of the method, namely to produce an ordered list of shops, is not technical.

[7] The appellant considers that the selection of a group of vendors at a shopping location contributes to the technical character of the invention. Decision G 1/04 is referred to as noting that a non-technical feature may interact with technical elements so as to produce a technical effect. This decision refers to T 603/89 as the basis for this statement.

[8] This decision in turn cites T 26/86 as an example where the mix of technical (X-ray apparatus) and non-technical features (computer program) as a whole produces a technical effect (extending of the life of an X-ray tube). It also gives the counterexample of T 158/88 where the technical features (displaying characters on a screen) and non-technical features (processing data according to the specific selection criteria) produce an effect (replacing data representing a specific character form by data representing the same character in a different form) that differs only in the information displayed, and is not technical. In T 603/89 itself, the technical features (physical marker that is placed on keyboard of an instrument) and non-technical features (displaying numbers and notes) produce an effect (improvement of a teaching method) that is an improvement of a method for performing a mental act and thus also not technical.

[9] In the present case, the appellant argues that the alleged non-technical feature of the information regarding the group of vendors “interacts with technical elements, in the form of the server 18, to produce a technical effect in the selection of vendors and the transmission of processed information regarding that selection to the mobile wireless communications device”. However, in the Board’s view, this is an instance of the well-known argument that could be termed the “technical leakage fallacy”, in which the intrinsic technical nature of the implementation leaks back into the intrinsically non-technical nature of the problem. In this case, the “selection of vendors” is not a technical effect and the mere “interaction” with technical elements is not enough to make the whole process technical as required by the jurisprudence. Similarly, the transmission of the selection is no more than the dissemination of information, which is in itself also not technical. These effects are more like those in T 158/88 and T 603/89 than in T 26/86. Technical considerations only come into play once the relevant features are implemented.

[10] The appellant also argued that the difference of identifying a group of vendors rather than a single vendor as in D1 implied a problem of logistics, which was not a business method. However, the Board considers that a logistic or navigation system that actually involves navigation to a particular place might have some technical element, but the present invention does not as it does not involve any physical elements, but simply indicates possible choices. Moreover, in the Board’s view, producing an itinerary is not technical as it involves only standard human behavioural concepts such as going to the bank and then going to the supermarket. The appellant replied that the physical act of going to the locations conferred technical character on these thoughts.

[11] Here again, the Board sees something of a well-known argument that could be termed the “broken technical chain fallacy” after decision T 1741/08. This decision dealt with the fairly common situation that arises in connection with graphic user interfaces (GUIs) where a technical effect might result from the user’s reaction to information. The decision essentially concluded (see point [2.1.6]) that a chain of effects from providing information to its use in a technical process is broken by the intervention of a user. In other words, the possible final technical effect brought about by the action of a user cannot be used to establish an overall technical effect because it is conditional on the mental activities of the user. This applies to the present case because any possible technical effect depends on the user’s reaction to the itinerary.

[12] The appellant also argued that according to T 362/90, providing a status indication about the state of a system was a technical effect. It is true that T 115/85 states that giving visual indications automatically about conditions prevailing in an apparatus or system is basically a technical problem. In that case the system was the input/output device of a text processor. T 362/90 cites this decision in support of the technical character of a simultaneous optical display of a current and ideal gear selection based on conditions in a gearbox. In the Board’s view, the display of an optimal shopping itinerary is different because there is no comparable technical system since shopping is intrinsically non-technical. The availability of goods in a shop and information on shopping lists are not comparable with the status of a technical system. Furthermore, although the system of the invention has a server and a mobile device that are undoubtably (sic) technical, the invention is not displaying information about the status of these devices themselves, but only non-technical information that they process.

[13] In summary, therefore, the Board is of the opinion that a technical effect may arise from either the provision of data about a technical process, regardless of the presence of a user or its subsequent use, or from the provision of data (including data that on its own is excluded, e.g. produced by means of an algorithm) that is applied directly in a technical process. In the Board’s view, neither applies to the present case.

[14] Thus, in the Board’s view, the appellant’s formulation of the problem as “the provision of a technique which has greater flexibility and can provide results tailored to a user’s preferences” is not a technical problem and is also far too general because it does not correctly take into account non-technical aspects. In the Board’s view, the problem is the much more specific one of how to modify the prior art to implement the non-technical aspects, in this case how to plan a shopping trip (itinerary) that includes orders from different vendors.

[15] Concerning the implementation, the Board first notes that it is essentially only claimed in functional terms and that there are no details of how it is actually done. The only technical features of the solution are the hardware elements themselves and the specification of which elements perform the various steps. The elements of a mobile wireless communications device and a server are conventional and moreover known from D1. The only assignment of function that is specified is that the server determines the vendors as function of the orders and the location. Since D1 determines the vendor for a single order at the server, it would be obvious to consider determining multiple vendors in the case of multiple orders.

[16] At the oral proceedings, the appellant stressed that the system of D1 only identified one facility whereas the invention identified a group of vendors and gave navigation information about how to visit them. If the system of D1 were to be used to order several items, it would only return information on a single vendor that could supply all the items. There might be no single vendor capable of doing this, or the vendor might be a long way away from the customer. The invention would be able to find more than one vendor that together could fulfil the order. Thus the invention solved the problem of reducing the number of failed attempts to fulfil an order. In the Board’s view, this is another example of a standard argument, which could be termed the “non-technical prejudice fallacy”. The argument essentially invokes non-technical aspects as a reason for not modifying the prior art, whereas these features cannot in fact contribute to inventive step. The question is not whether the skilled person would consider providing these features because that has already been decided in formulating the technical problem. The question is simply how it would be done. As mentioned above, in this case, the “how” comprises conventional hardware carrying out the tasks in an obvious way. In particular, there is no technical reason why the skilled person would not have considered modifying the various parts of the system of D1, at least to the extent claimed, to solve the problem posed.

[17] It follows from the above, that in the Board’s view, the appellant’s analysis of why the repeated selection of vendors according to D1 is not equivalent to the claimed solution is moot.

[18] Accordingly the Board judges that claim 1 of the main request does not involve an inventive step (A 56 EPC 1973).

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T 1395/09 – Clean/r Shaven

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

1. A safety razor comprising a blade unit (2) having at least one blade (4) with a sharp cutting edge, a handle (1) on which the blade unit is carried, an electrical device (24,26), and a control device (16) for controlling operation of the electrical device, [characterized in that] the control device (16) [is] being responsive to a water detecting arrangement whereby the electrical device is actuated for cleaning the blade unit when a person using the razor immerses the blade unit (2) into a body of water [for cleaning the blade unit], the water detecting arrangement comprising a pair of electrodes, at least one of which is provided on the blade unit, characterized in that the electrodes are spaced apart from each other so that, in normal use of the razor, the electrodes will not be bridged by shaving foam collected on the blade unit in the course of shaving.

The Board raised a clarity objection, much to the dismay of the patent proprietor:

[1] Claim 1 of the main request (i.e. claim 1 of the patent as maintained by the OD […]) comprises the functional definition of the spacing of the pair of electrodes: “the electrodes are spaced apart from each other so that, in normal use of the razor, the electrodes will not be bridged by shaving foam collected on the blade unit in the course of shaving”. This defines a result to be achieved.

[1.1] In its communication annexed to the summons to oral proceedings (OPs) the Board remarked that, since this feature, which had been introduced during the opposition proceedings into claim 1, was taken from the description of the patent in suit, the issue of clarity of the wording of claim 1 as maintained has to be examined […].

[1.2] The [patent proprietor] argued at the OPs that the Board, particularly in the light of G 9/91 [18], would not be entitled to examine ex-officio this amendment since the [opponent] did not raise any corresponding clarity objection in the entire proceedings, let alone in its statement of grounds of appeal.

These arguments cannot hold for the following reasons.

[1.3] First of all, the quoted decision G 9/91 concerns the extent and power of examination in opposition cases by the OD and the Boards of Appeal and the principle of examination by the EPO of its own motion as laid down in A 114(1) with respect to grounds of opposition. This is clear from the quoted point 18 of its reasons which states “Although A 114(1) formally covers also the appeal procedure; it is therefore justified to apply this provision generally in a more restrictive manner in such procedure than in opposition procedure. In particular with regard to fresh grounds for opposition, for the above reasons the Enlarged Board considers that such grounds may in principle not be introduced at the appeal stage” (emphasis added by the Board).

[1.3.1] As admitted by the [patent proprietor] at the OPs clarity does not represent a ground of opposition as specified in A 100(a) to 100(c). Nonetheless as soon as amendments are made in the claims or the specification during the opposition and/or appeal proceedings the verification that all requirements of the EPC are met has to be carried out.

This view is supported by G 9/91 [19] wherein it is further stated that “In order to avoid any misunderstanding, it should finally be confirmed that in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC (e.g. with regard to the provisions of A 123(2) and (3))” (emphasis added by the Board).

This conclusion is fully in line with the longstanding case law (see Case Law, 6th edition 2010, section VII.D.4.2; see e.g. T 227/88; T 472/88 and T 922/94). Where the OD, in the impugned decision, has not even discussed the issue of clarity, it is up to the Board to do so.

[1.3.2] The [patent proprietor] argued also on the basis of the statement of the EBA in G 9/91 that the appeal procedure is more a judicial procedure for principally reviewing the decisions of the first instance and by its nature less investigative on the part of the Board. As the opponent had not objected to the clarity of this claim in the opposition proceedings, nor in the statement of grounds of appeal, the Board overstepped its competence in itself raising the issue.

However, in the present case the [opponent] raised objections under A 83 in its statement of grounds of appeal […] in that the patent did not define what is meant by the term “normal use of the razor” (one of the amended features objected to by the Board) nor what is “the amount of shaving foam collected on the blade unit in the course of shaving” (the other amended feature objected to by the Board). These objections had already been raised during the opposition proceedings […] and have been discussed at the OPs.

Since the issue is in the proceedings and is related to amended features in the claim, the Board considers it perfectly in order for it to address it on its own motion as an issue of clarity of claim 1 of the patent as maintained, even on the premise advanced by the [patent proprietor]. In this respect it does not matter whether the issue was raised under A 83 or A 84.

[1.4] As far as the amendments are concerned, the Board remains of the opinion that claim 1 as maintained does not comply with A 84, for defining a result to be achieved “… the electrodes are spaced apart from each other so that, in normal use of the razor, the electrodes will not be bridged …”. This result is influenced by the unspecified shaving foam, its amount, the hardness of the water used for shaving, etc. Further, it includes the vague and unspecified term “in normal use of the razor”; it is not clear what that feature means in practice and what limitations are implied by “a normal use”.

[1.5] The [patent proprietor’s] arguments to the contrary cannot hold for the following reasons.

In the present case, as convincingly argued by the [opponent], it is actually possible to more precisely define the subject-matter claimed (see e.g. claim 1 of the first auxiliary request) without unduly restricting the claim. Further, it is considered to be impossible to determine the distance between the pair of electrodes by experimentation without undue burden for the person skilled in the art. This is due to the fact that the result of such experiments, i.e. whether or not the electrodes are bridged when varying the distance between them, is primarily dependent on the electrical conductivity of the used, but unspecified shaving foam and its unspecified components as well as the amount thereof and the hardness of the water used. The patent in suit is absolutely silent in this respect and gives no guidance at all. Hence the quoted conditions for allowing this functional definition are considered not to be met in the present case.

[1.6] The Board therefore considers that claim 1 of the main request contravenes A 84. The main request is therefore not allowable.

NB: This decision has more to offer. If you are interested in how G 1/99 (defining exceptions to the principle prohibiting reformatio in peius) is to be applied, you might want to have a look at point [2.2] et seq. of the reasons (and in particular point [2.3.2]).

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T 1119/09 – Mere Instructions

This is an examination appeal.

Claim 1 of the main request on file read (in English translation):

1. Apparatus for controlling or regulating a system based on a basic object model which represents the functionality of a runtime system and/or of the system to be controlled or to be regulated, comprising a data processing device for processing a first object type having a predetermined data structure which is part of the basic object model, and which can be instantiated for objects, characterised in that the first object type comprises a type data field (DV) and in that the data processing device allows to store additional allocation information of the object type relating to an additional tool which is not part of the basic object model, in the type data field.

Board 3.5.05 dismissed all requests for lack of clarity.

It nevertheless discussed the underlying technical contribution and inventive step.

*** Translation of the German original ***

[6] The application emphasises that the object oriented software is to be used for controlling industrial processes but nevertheless leaves the nature of the system to be controlled as well as the kind of programme control essentially undefined.

[6.1] As a matter of fact, the Board is of the opinion that the structure of the claimed control apparatus, which comprises a runtime and an engineering system, is independent of the system to be controlled and of the precise way in which the control is performed. Moreover, this partition does not depend on whether the runtime or engineering system us used for developing an industrial control or another application, such as e.g. a company software. Rather, this partition is typical for programme development contexts of all kinds, as they were known well before the priority date of the present application.

[6.2] The appellant argued that it was specific for industrial control systems that they have to be developed during operation. Thus the claimed extension by an additional tool that had not been foreseen from the very beginning, such as an editor, was an integral part of such a control system and, therefore, had to be considered to be technical.

[6.3] The Board does not see any reason to doubt that the development of an industrial control during operation can be necessary, although it should be noted that the independent claims of all requests do not state when, with respect to the run time of the control system, the allocation to an new additional tool or editor is to be performed. However, the development during operation is not specific to industrial controls but is also relevant and commonplace for other applications such as, for instance, in the banking and insurance industries. More importantly, the Board is of the opinion that the precise moment of use of the claimed invention does not change the fact that the allocation of objects to a new tool, which is an aspect of programme development, has to be allocated to the engineering system and not to the runtime system or the system that is to be modelled.

[6.4] Thus the Board comes to the conclusion that the claimed invention does not solve any specific problem belonging to the field of industrial control and, therefore, does not make any technical contribution to this field.

[6.5] Thus the indication in the claim of an unspecific application “for controlling or regulating” as such is not sufficient for establishing the presence of an inventive step.

[7] As against a known industrial control such as the one disclosed in the application […] claim 1 of the main and first auxiliary requests provides an apparatus by means of which an “additional tool which is not part of the basic object model” can be allocated to an object type or at least to individual object instances.

[7.1] The application describes this mechanism as an alternative to a so-called conventional intervention on the original object model, which required the introduction of new object types […]. The new allocation of an “additional tool” to given objects was said to change the overall behaviour of the control system. However, this change does not depend on whether the allocation is done in the conventional way – which is said to be relatively laborious (aufwändig, sic) […] or according to the invention. Consequently, the effect related to the claimed allocation mechanism does, in particular, not depend on whether the new “additional tool” is an editor or another application, and on whether it is allocated to a “technological object type” or another object type.

[7.2] The decision to allow (or enforce, as the case may be) the access to certain objects by means of certain tools determines how the software developer has to proceed when creating software. The Board is of the opinion that such decisions qualify as instructions to the software developer which as such do not have any technical effect (see also T 354/07 [4, last two paragraphs]).

[7.3] Thus at best the means by which the desired allocation is implemented in a given system – in the present case the provision of a type data field of the object type (main request) and its optional use for generating an object instance (auxiliary request) - can make a technical contribution.

[7.4] However, the appellant did not submit that these means did make a technical contribution of any kind, nor which contribution this could be, but only based the presence of a technical contribution on the field of application, i.e. industrial control. As explained above, the Board is of the opinion that the claimed subject-matter does not make any technical contribution in this field, and that the limitation to this field of application as such cannot justify the presence of an inventive step. Moreover, the Board cannot see any apparent technical contribution made by said means.

[7.5] Thus the Board has no reason to deviate from its provisional opinion expressed in the annex to the summons, according to which the main and auxiliary requests did not involve any inventive step, A 56 EPC 1973. The Board adds that none of the additional features according to the auxiliary requests 2 to 5 filed during the oral proceedings allows to overcome this objection.

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J 13/12 – It’s Time To Get Ahead

This decision deals with an appeal against the decision of the Legal Division (LD) to resume proceedings that had been stayed.

The patent application was about to be granted (communication pursuant to R 71(3) issued on February 20, 2009) when the LD stayed the proceedings as of April 16, 2009, because the Doosan Lentjes company had started entitlement proceedings against the applicant, the Hamon Enviroserv company before the Düsseldorf district court.

On June 21, 2011, this court dismissed the complaint. The plaintiff filed an appeal before the Düsseldorf appellate court.

The LD then announced that the proceedings would be resumed in view of the length of the proceedings and the fact that the application was about to be granted.

The Doosan Lentjes company filed an appeal against this decision.

The Board found the appeal to be admissible and then examined its allowability:

*** Translation of the German original ***

[3] The appellant essentially bases its appeal on the fact that in its decision on the resumption of the stayed proceedings the LD had not sufficiently considered and weighed all the relevant objective circumstances and the interests of the parties but had only followed the judgment of the Düsseldorf district court, which had dismissed the complaint.

Based on this the appeal would be allowable if the LD had wrongly exercised its discretion, and, therefore, committed a legal error, by fixing July 1, 2012, as the date on which the grant proceedings – which had been stayed since  April 16, 2009 – were to be resumed pursuant to R 14(3) […] or if the factual circumstances have changed with respect to those on which the impugned decision was based such that they now allowed for and required a different assessment of the question of whether the grant proceedings were to be resumed or further stayed pursuant to R 14(1) […].

Has the decision been based on a wrongful exercise of discretion?

[3.1.1] First of all it should be noted that the extent to which the Boards of appeal can review discretional decisions of the administrative instance is limited. Insofar as the appellant contests the way in which the LD has exercised its discretion when taking the impugned decision, the case law of the Boards of appeal, which has in principle been confirmed by the Enlarged Board of appeal (G 7/93), has established that it is not the function of a Board of appeal to review afresh the factual situation of the case as if it were in the place of the organ of the administrative instance which has taken the impugned decision, in order to decide whether or not it would have exercised such discretion in the same way. If an administrative organ is required under the EPC to exercise its discretion in certain circumstances it should have a certain degree of freedom when exercising that discretion, without interference from the Board of appeal. A Board of appeal should only overrule the way in which the administrative instance has exercised its discretion if it comes to the conclusion either that the latter has not exercised its discretion in accordance with the right principles or in an unreasonable way, and has thus exceeded the proper limits of its discretion.

[3.1.2] As can be seen from the impugned decision, the LD has taken account of both the provisions that are relevant for its decision – in particular A 61 and R 14 – and the relevant case law, in particular G 3/92 and J 33/03; it has realized that it has a discretional power and has weighed the interests of the parties.

Thus it is clear that [the LD] did not wrongly exercise its discretion by not making use of its discretional powers.

[3.1.3] As to an exercise of discretion in accordance with wrong principles, it is necessary to first define the legal framework:

[3.1.4] A 61(1) in connection with R 16 governs the procedural rights of a person other than the applicant (a so-called third party) to whom a final decision of a national court has allocated the right to the grant of a European patent in place of the applicant; it offers this person the possibility of carrying out certain required actions related to the application.

Insofar as the European patent has not yet been granted (R 16(1)(b)) this third party may, no later than three months after the decision recognising its entitlement has become final (R 16(1)(a)), in respect of Contacting States designated in the EP application in which the decision has been taken or recognised or must be recognised on the basis of the Protocol on Recognition:

(a) prosecute the EP application as its own application in place of the applicant (A 61(1)(a));

(b) file a new EP application in respect of the same invention (A 61(1)(b)); or

(c) request that the EP application be refused (A 61(1)(c)).

[3.1.5] R 14 provides for a stay of the proceedings during the period in which the third party seeks a judicial decision confirming that it is entitled to the grant of the European patent; its purpose is to safeguard the rights of the third party for the duration of the proceedings by which the third party asserts its claims. R 15, which provides that from the date on which a third party provides evidence that it has instituted national proceedings by which the third party asserts its claims and up to the date on which the proceedings for grant are resumed, neither the European patent application nor the designation of any Contracting State may be withdrawn, has the same purpose.

[3.1.6] Pursuant to R 14(1), first sentence, if a third party provides evidence that it has instituted proceedings against the applicant seeking a decision within the meaning of A 61(1) the proceedings for grant shall be stayed unless the third party communicates to the EPO in writing its consent to the continuation of such proceedings.

[3.1.7] In the present case the grant proceedings were stayed by a communication of the LD dated April 22, 2009, with retroactive effect as of April 16, 2009, as a consequence of the indication of the appellant dated March 24, 2009, and its further written submission dated April 16, 2009.

[3.1.8] The fact that the LD did not determine a date on which the examination proceedings were to be resumed when it decided to stay the proceedings does not as such allow to draw conclusions as to the further proceedings. This is because pursuant to R 14(3) the grant proceedings may be resumed even if the EPO had not fixed a date for the proceedings to be resumed in its decision to stay, and before a final decision has been issued in the national entitlement proceedings.

[3.1.9] R 14 has to be considered in the context of the EPC as a whole and in particular in connection with A 61, which it further implements, and R 15. As the Board had already explained in its decisions J 7/96 [2.2] and J 8/96 [2.2], these provisions form part of a system of legal process which is provided under the EPC for determining the right to a European patent application when this is in dispute, and for implementing this determination. It is clear from the travaux préparatoires of the EPC that it was considered important to provide such a system in which disputes as to entitlement could be settled by a final decision of a national court but then implemented centrally by the EPO with respect to all the designated States (see document IV/2498/1/61-D, page 17 et seq). The terms of these provisions must be interpreted in this context and in the light of the object and purpose of this system (cf. G 3/92 [1]).

[3.1.10] As the Board has decided in its decision J 33/03 [2.1], contrary to the decision to stay the proceedings according to Rule 14(1), it is in the discretion of the Office to decide whether the proceedings are to be continued under R 14(3). When exercising discretion within the framework of R 14(3) the EPO, i.e. the LD and, pursuant to A 111(1), second sentence, also the Board acting within the framework of the competence of the LD, has to weigh the interests of the applicant on the one hand and the third party who has instituted national entitlement proceedings against the applicant on the other hand. In this context the EPO has to consider in particular the purpose of A 61, which is directed at a “well-balanced and fair resolution of conflicting interests” (G 3/92 [8.4]). The Guidelines for Examination, which are internal Guidelines issued by the administration, may be used as a complement.

[3.1.11] According to the Guidelines developed for the application of R 14(3) in concrete cases, the Guidelines for Examination A IV-2.3:

“If a date is set for the resumption of the proceedings for grant, it should be chosen with due consideration for the interests of the third party who only becomes a party to the proceedings after a judgement has been given in his favour, on the basis of the probable duration of the court proceedings so as to enable them to be concluded within that period of time. If, by the date set, the court has not given a judgement, the proceedings for grant must at all events be further stayed if the judgement is expected in the near future. However, the proceedings for grant should be resumed if it is evident that delaying tactics are being employed by the third party or if the proceedings in the court of first instance have concluded with a judgement in favour of the applicant and the legal procedure is extended by the filing of an appeal.”

[3.1.12] These internal administrative provisions do not support the appellant’s allegations concerning the conditions for resuming the grant proceedings and in particular do not support the legal consequences it seeks to obtain. Rather, the LD has appreciated all relevant circumstances of the case in a way that does not allow to conclude that it has wrongly exercised its discretion.

[3.1.13] In particular, it is not wrong, but it rather follows from the internal administrative provisions of the EPO (Guidelines for Examination) that the LD has not issued a separate communication setting a date for the grant proceedings to be resumed before the order to resume the grant proceedings. The LD was entitled to do so for the first time in the impugned decision.

[3.1.14] Nor can it be derived from the Guidelines for Examination that the LD has to wait for a final decision in the entitlement proceedings, possibly after all possible remedies have been exhausted (first instance, appeal, and review proceedings) or at least for the end of the appeal proceedings, before it can fix a date for the resumption of the grant proceedings, and in any case before the proceedings are actually resumed.

[3.1.15] It is part of the circumstances that the LD has to take into account (and which it has indeed taken into account) that a third party may indeed only exercise its procedural rights pursuant to A 61(1) if there has been a decision to its favour in national proceedings according to which the applicant was not entitled to a patent application, but this does not necessarily mean that the grant proceedings relating to the patent application of the person that was not entitled has to be stayed or remain stayed until that date. Rather, the rights of the third party are not only protected by possibility for it to prosecute said European patent application as its own application in place of the applicant who lacked entitlement (A 61(1)(a)) but also by the possibility to file a new European patent application in respect of the same invention (A 61(1)(b)). The admission of this new application is not limited to the case where the former, irregular application is still pending before the EPO (cf. G 3/92 [headnote]) in case the application has been withdrawn or is deemed to have been withdrawn.

Moreover, even after the Examining Division has decided to grant a patent application filed by an applicant who was not entitled, the entitled third party can exercise its right pursuant to A 61(1)(a) until the formal end of the grant proceedings pursuant to A 97(3) and A 98 and prosecute the European patent application as its own application in place of the applicant who lacked entitlement (cf. J 7/96 [9], J 8/96 [9]).

Insofar as the pursuit of the grant proceedings curtails the procedural rights of the third party, it puts an end to the strong legal position of the third party. However, in the present case possible serious consequences for the appellant are due to the fact that it has instituted entitlement proceedings and filed the request for a stay of the proceedings only at a very late stage of the grant proceedings, i.e. after the communication pursuant to R 71(3) to the applicant, although it was aware of the [existence of the] application. As a matter of fact the third party that prosecutes the EP application as its own application pursuant to A 61(1)(a) takes on the application in the procedural stage in which it was at the time when the proceedings were stayed. This also applies to the impending loss of right to file divisional applications according to the presently applicable provisions for divisionals, which was mentioned in this context by the appellant. Thus the fact that this circumstance was not taken into account cannot constitute a wrongful exercise of discretion.

[3.1.16] Nor can such a wrongful exercise of discretion be constituted by the consideration of the LD that the entitlement proceedings were unsuccessful for the appellant, at least at first instance.

The Guidelines for Examination precisely refer to the case where the judgement is in favour of the applicant – and to the detriment of the third party – who then files an appeal as an example for a situation where the stayed proceedings are continued.

[3.1.17] Insofar as the appellant asserts that the decision of the Düsseldorf district court to dismiss its complaint was mistaken and that it was likely to succeed in the appeal which it had filed, these submissions cannot be taken into account in the grant proceedings in general and in particular in the present appeal proceedings (cf. J 33/03 [2.2]; Benkard-Melullis, EPÜ, 2^nd edition, 2012, A 61, marginal number 21).

Only the national courts have jurisdiction to decide claims, against the applicant, to the right to the grant of a European patent (Article 1(1) of the Protocol on Jurisdiction and the Recognition of Decisions in respect of the Right to the Grant of a European Patent (Protocol on Recognition)). Moreover, neither the LD nor the Board can decide to which party the European patent application might belong or which outcome of the national entitlement proceedings is more likely.

Thus the only aspect that can be taken into account when weighing the interests (and which was indeed taken into account by the LD) is that the entitlement proceedings instituted by the appellant against the respondent has not led to a final decision yet but is still pending as an appeal, which – in view of the previous procedural behaviour of the parties – might be followed by review proceedings before the Federal Supreme Court (Bundesgerichtshof). At least a reasoned judgement of a competent German court that has been issued after inter partes proceedings (im streitigen Verfahren) militates against the claims (Klagebegehren) of the appellant. It is not foreseeable that the appellant will finally succeed in the entitlement proceedings, nor is it foreseeable when there will be a final decision on the entitlement proceedings (before the appellant court or possibly even in review proceedings). Thus a prolongation of the stay of the grant proceedings according to the main request (as well as the first auxiliary request) of the appellant would lead to an indefinite delay of the grant proceedings and thus to a disproportionate disadvantage for the appellant.

[3.1.18] Finally the LD was entitled to – and even had to – take into account that the grant proceedings had been stayed for more than three and a half years (cf. J 10/02 [4.1] where the importance of the duration of the stay was underlined). This fact alone affects the interests of the respondent in a speedy treatment of its application in a significant way; a further stay of the grant proceedings would correspond to a disproportionate burden for the respondent that cannot be justified by the interests of the appellant.

[3.1.19] Insofar as the appellant has asserted that the fact that the examination proceedings were quite advanced, as can be seen from the fact that there had already been a communication pursuant to R 71(3), and that, as a consequence, a grant of the patent could be expected very soon, would hinder it from asserting its rights, this aspect has also been explicitly considered by the LD (point 8 of the impugned decision).

[3.1.20] Thus the Board of appeal is unable to find any error committed by the LD in the exercise of its discretion when it issued the impugned decision.

[3.2] As to new circumstances which could now justify a different assessment of the question of whether the proceedings were to be stayed by the Board of appeal, the appellant essentially refers to a change of the provisions governing divisional applications as well as to the fact that once the patent was granted, it could only assert its claim to entitlement under more difficult circumstances in each state designated by the patent.

[3.2.1] However, the Board of appeal cannot see – although it has asked [the appellant] in its summons to oral proceedings – how the legal position of the appellant could have changed to its detriment since the impugned decision has been issued; as a matter of fact only if and to the extent that this was the case the Board of appeal could take a decision that was not limited to the review of discretional decisions. Rather these circumstances are circumstances that already existed at the time of the impugned decision which, therefore, were already addressed by the discretional decision, which, as mentioned above, was free from error.

[3.2.2] Nor can the Board of appeal discern any new circumstances which have arisen after the impugned decision was issued and which would justify or require a prolongation of the stay of the grant proceedings pursuant to R 14.

Both parties have confirmed that the appeal proceedings before the Düsseldorf appellate court were pending and that one could not expect a judgement, let alone a final decision, in the entitlement proceedings in the near future. The investigations of the Public Prosecutor (staatsanwaltschaftliche Ermittlungen) as such do not provide sufficient indications that would allow to draw the conclusion that the position of the respondent was unlawful, all the more as the EPO and the Boards of appeal have no jurisdiction for assessing the chances of success of the national lawsuit and the investigations of the Public Prosecutor.

Finally, the Board of appeal has no jurisdiction for assessing the pieces of circumstantial evidence cited by the appellant, which it believed were sufficient for establishing an unlawful behaviour of the respondent and its entitlement […]. Only the national authorities (court, public prosecutors) have jurisdiction in this regard.

[3.2.3] Moreover, the discretionary considerations mentioned by the LD and taken into account by it still apply; the Board of appeal, considering all relevant circumstances and the interests of the parties both from a factual and a legal point of view, comes to the conclusion that the stay of the grant proceedings should not be prolonged and that the proceedings should be resumed. […]

The appeal is dismissed. […]

The grant proceedings are to be resumed as soon as this decision is announced (June 17, 2013).

It is interesting to see how important the Guidelines become in this context, isn’t it?

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