T 15/10 – Fishy

Patents are fun, not least because of the surprising things that may be claimed.

Claims 1 and 14 of the only request on file read:

1. A method of testing an avian for its predisposition for fishy taint in eggs comprising analyzing the nucleic acid of a sample comprising the gene encoding FMO3 or a corresponding mRNA for a nucleotide polymorphism which is linked to said predisposition, wherein a difference from the wild-type FMO3 sequence is indicative of fishy taint, said difference being the presence of a serine codon in a position corresponding to position 329 of chicken FMO3 as shown in SEQ ID NO: 25 or in a homologous position of other avian FMO3 (poly)peptides.

14. A method for selecting an avian or part of an avian, including their semen or eggs, comprising the steps of:
(a) testing for a predisposition for fishy taint in eggs comprising the steps of the method of anyone of claims 1 to 13;
(b) selecting the avian based on the information derived from said testing; and
(c) optionally, using said information for further breeding considerations.

Board 3.3.08 had to deal with an A 53(b) objection:

[2] The [opponent] has raised an objection under A 53(b) in its letter 24 September 2013 sent in reply to the Board’s communication pursuant Rule 15(1) RPBA. The objection is raised against claim 14, which the [opponent] argued to be directed to an essentially biological process for the production of animals.

[3] This objection has not been mentioned in the statement setting out the grounds of appeal, but the Board notes that the opposition was originally filed inter alia on the ground that the subject-matter of the patent was not patentable under A 53(b) […].

[4] The [opponent] has explained that it decided to raise the objection in view of the conclusion reached by the Enlarged Board of Appeal (EBA) in consolidated decisions G 2/07 and G 1/08 (see supra) with regard to the term “essentially biological” within the meaning of A 53(b). These decisions have been issued on 9 December 2010, ie. after the date of filing of the statement of grounds.

[5] Using the discretionary power conferred to it by Article 12(4) RPBA the Board, considering that this explanation justifies the late raising of the objection under A 53(b) in the appeal procedure, decides to admit the objection.

[6] The [opponent] argues that it applies the conclusion reached by the EBA in decisions G 2/07 and G 1/08 (with regard to processes for the production in plants) to processes for the production of animals. It considers that the process of claim 14 qualified as a non-microbiological process for the production of animals that is excluded from patentability for being “essential biological” because it contains a step of crossing the whole genomes of animals and a step of selecting of animals.

[7] The first question to be answered by the Board, before embarking on any further interpretation of the teaching of decisions G 2/07 and G 1/08, is whether claim 14 is actually directed to a process for the production of animals including a step of crossing the whole genomes of animals and a step of selecting of animals.

[8] Claim 14, which is expressis verbis directed to a method for selecting an avian (or part of an avian), comprises two compulsory steps (a) and (b) which can be supplemented by a third step (c). Step (a) refers to testing the avian or part thereof for predisposition for fishy taint in eggs. It is carried out using the method of claim 1 or claims dependent thereon. Step (b) concerns selecting the avian based on the conclusions drawn from the results of step (a) and step (c) concerns the use of these conclusions for further breeding considerations which may be breeding management considerations such as the propagation, culling and feeding of animals […] or the exclusion of animals with a predisposition to produce eggs with fishy smell from breeding programs […].

[9] This analysis clearly shows that claim 14 is not at all directed to a method of production of animals, let alone to a method comprising a step of crossing the whole genomes of animals. It features a method which provides information useful to manage animals depending on their predisposition to produce eggs with fishy odour or to pass on to the offspring specific alleles or variants of a gene responsible for developing such a phenotype […].

[10] The [opponent’s] argument is therefore not convincing and, consequently, claim 14 meets the requirements of A 53(b).

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The file wrapper can be found here.

T 2051/10 – No Mistake

In this case the patent proprietor filed amended claims directed at a rinse aid (Klarspülmitel) in which one particular hydrocarbon radical was “optionally” substituted by hydroxyl groups. This amendment was said to be a correction; the Druckexemplar was filed as supporting evidence.

The Board did not endorse this approach.

*** Translation of the German original ***

[2] The [patent proprietor] has invoked an erroneous discrepancy of the wording of claim 1 as granted with respect to the text of the Druckexemplar and has requested a “correction” of this discrepancy without indicating any corresponding legal basis. The requested “correction” has already been carried out in claim 1 according to the main request and the auxiliary requests 1 to 3 and 5.

[2.1] However, neither R 139 nor R 140 allow for a “correction” of the granted patent as desired by the [patent proprietor] (see G 1/10 [order, as well as point 1 and points 10 and 11 of the reasons in connection with point VII.2 of the summary of facts and submissions]. This notwithstanding, the Board notes the following in respect of the corresponding submissions of the [patent proprietor]:

[2.1.1] According to claim 1 of the Druckexemplar sent together with the communication pursuant to R 71(3) dated December 14, 2007, including pages 27 to 29 (claims) dated November 19, 2007, the radical R² is only “optionally” substituted by 1 to 5 hydroxyl groups.

[2.1.2] In response to said communication the applicant has, of its own motion, filed, in a letter dated March 17, 2008, new claims in the three official languages. Claim 1 (in all official languages) was inter alia amended, with respect to the version contained in the Druckexemplar, in that the radical R² now is - mandatorily - substituted “by 1, 2, 3, 4 or 5 hydroxyl groups”.

[2.1.3] In a short communication of the Examining Division dated April 9, 2008, the Office informed the applicant that its request had been granted and that the documents had been amended by replacing [the pages on file] by the amended pages.

[2.1.4] Thus [the Board] does not understand why the patent specification EP 1 509 588 B1 is said to contain an “error”.

[2.2] Therefore, in what follows the Board treats even the requests claim 1 of which contains the amendment which has been referred to as “correction” by the [patent proprietor] as “normal requests” for an amendment pursuant to A 123(1) (cf. G 1/10 [13]).

Obviously, all the “corrected” requests where then dismissed based on a violation of A 123(3).

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

The file wrapper can be found here.

T 584/09 - A Waste Of Time?

A kind colleague has informed me that Board 3.3.01 has now issued its final decision in case T 584/09.

In this case the opponent filed an appeal after the Opposition Division had maintained the patent in amended form.

In its first decision, dated February 3, 2011, Board 3.3.01 revoked the patent.

The Enlarged Board of appeal (EBA), in its decision R 21/11, set aside the decision because the deciding Board had not been aware of a request (to admit expert opinion D27) and, therefore, had ignored it.

The EBA dismissed the request to have the case decided by the Board in a new composition, but as the former chairman had retired, the remaining former members recused themselves and the Board accepted this in its second decision of March 1, 2013.

In its third decision, dated June 10, 2013, the Technical Board now again revoked the patent. This time document D27 was admitted, but it appears not to have played any role in the decision.

So this is another case where a petition for review is successful but in the end, it is not really worth the time and effort: außer Spesen nichts gewesen.

What do we learn from this? In my opinion, before you file a petition for review, you should consider not only (a) if there are any good reasons for the EBA to allow the petition (which is rare), but also (b) if so, if this is likely to lead to a different outcome.

I guess not many cases will pass this two stage test.

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

The file wrapper can be found here.

T 2509/11 – It’s Up To The Director

This is another examination appeal where the Board found a decision “based on the current state of the file” to be insufficiently reasoned. There is an interesting final remark on the composition of the Examining Division (ED).

[3] It is established jurisprudence of the Boards of Appeal that for a decision to be reasoned it must contain a logical sequence of arguments and that all facts, evidence and arguments essential to the decision must be discussed in detail (see for instance T 278/00 [2-4]; T 1997/08 [4]).

[4] The Boards of Appeal have consistently decided further that a request for a decision based on the current state of the file does not mean that the party gives up its right to a reasoned decision (see T 1356/05 [15]; T 1309/05 [3.7]). It simply means that the party does not wish to further comment on the case.

[5] It follows from the above that, if a decision is to be reasoned by reference to one or more previous communications, the requirement of R 111(2) is only met if the referenced communications themselves fulfil the above mentioned requirements. The decisive reasons for refusal must be clear to the appellant and to the Board of Appeal from the reference. This applies, in particular, if reference is made to more than one preceding communication, dealing with different issues and/or having as basis different sets of claims. A complete chain of reasoning has to be directly derivable from the referenced communications and it must not be left to the Board and the appellant to speculate as to which part of an incomplete reasoning given in preceding communications might be essential to the decision to refuse the application (see T 963/02 [2.1]).

[6] With its fax of 8 November 2010 the applicant withdrew its auxiliary request for oral proceedings (OPs) and requested an appealable decision according to the state of the file […]. The decision to refuse the application is of a standard form and as such neither specifies the grounds upon which it is based, nor contains any facts, evidence or arguments that justify the refusal of the application. It contains solely a reference to three communications, namely those of 10 September 2008, 10 March 2009 and 28 July 2009 issued in the course of the examination of the application, each of these communications having as basis different sets of claims […].

[7] The above has the consequence that, in order for the Board to be in the position of reviewing the decision under appeal, it would have to examine each of the cited communications for the facts, evidence and arguments that might support the refusal of the application and would have to piece the relevant parts together to arrive at the reasoning applicable to the present main and first auxiliary requests.

[8] As far as it concerns independent claims 1 and 9 according to the main request refused by the ED the Board finds as follows.

[8.1] According to the second and third communication […] the subject-matters of independent claims 1 and 9 according to the main request distinguish themselves from the carton disclosed in D2 by the “gusset panel feature” and the “diamond corner panel feature”. The fourth communication merely confirms the previous two communications. Neither communication clearly sets out what feature it actually considers distinguishing as the “gusset panel feature”, nor which features constitute the “diamond corner panels feature” that is distinguishing.

[8.2] The Board notes that the Guidelines for Examination in the EPO applicable at that time (versions December 2007 and April 2009), see C-IV, 11.7, first paragraph state that “in order to assess inventive step in an objective and predictable manner, the examiner should normally apply the so-called “problem-and-solution approach””. In this approach it is required to establish the closest prior art, the difference(s) of the claimed invention over this closest prior art and the objective problem to be solved. The latter means the aim and the task of modifying or adapting the closest prior art to provide the technical effects that this (these) difference(s) provide(s) over the closest prior art. When several distinct differentiating features dealing eventually with different technical problems are recognised it has to be assessed whether a synergistic effect exists between said differentiating features. If this is not the case also that aspect should be reasoned.

[8.3] No such “problem-and-solution-approach” can be deduced from these two communications. They do not properly cite the distinguishing features, nor the effects obtained thereby. Further, as regards the “gusset panel feature” the ED does not provide any (documentary) basis for its allegation that the skilled person would obviously provide them for obtaining a liquid-tight bottom, nor does it refute the hindsight-argument of the appellant. As regards the “diamond corner panels feature” it only provides the information and the statement that the skilled person would provide such for a better contact between the container walls and the bottles. None of the communications discusses the possible relationship between these two features, none deals with the appellant’s argument that there is a combinatory (synergistic) effect of these two features.

[8.4] As a result the Board can only establish that what it can “piece together” from the communications falls definitely short of a proper reasoning on lack of inventive step where two distinguishing technical features are concerned.

[9] As far as it concerns the independent claims 1 and 8 according to the auxiliary request refused by the ED the Board finds as follows.

[9.1] Again, the distinguishing features are not properly defined, in particular the further feature that the “liquid-tight bottom receptacle is formed from a continuous section of folded material of a blank and comprises a portion of the carton having an upper border below which no glued seams are formed” is nowhere mentioned.

[9.2] Again, no “problem-and-solution-approach” is presented. This counts in particular for the additional feature of the absence of glued seams below an upper border in the liquid-tight bottom of the carton.

[9.3] As a result, also this falls short of a proper reasoning on lack of inventive step where two (or even three) distinguishing features are established.

[10] The impugned decision is therefore at odds with the well established principle that, for a decision to be reasoned within the meaning of R 111(2), it must be self-contained, i.e. it must include all and each of the facts, evidence and arguments that are essential to the decision, and provide a chain of reasoning that is complete.

[11] In the Board’s judgment, this de facto absence of reasoning in the appealed decision amounts to a substantial procedural violation. Such a procedural violation requires that the decision under appeal be set aside and the case remitted to the department of first instance in application of A 111(1) and Article 11 RPBA.

[12] Although the appellant has not requested reimbursement of the appeal fee, the Board considers it in the present case to be equitable that the appeal fee be reimbursed, R 103(1)(a).

Further prosecution

[13.1] The Board takes note of the appellant’s argument that the statement in the last sentence of the ED’s fourth communication that OPs are deemed to be time consuming while not leading to grant “makes the responsible examiner appear prejudiced with regard to arguments to be discussed during the hearing and thus suspected of partiality”.

[13.2] In the last sentence of its fifth communication the ED invites the applicant to file independent claims “with an independent claim distinguished from the prior art”. This invitation does not appear to be helpful in view of the fact that the appellant, by then, had filed independent claims which – as acknowledged by the ED – were already distinguished from the prior art by two, if not three, different features.

[13.3] In view of the above and with respect to the applicant’s request dated 3 December 2009 to exclude the primary examiner from the further proceedings the Board wishes to make reference to decision T 71/99. In point [4] of the reasons it is observed that it follows from A 10(2) (a) and (i) that the organisation of the (examining and opposition) divisions is under the responsibility of the President of the office, who in practice delegates this power to the director via the responsible vice-president and principal director. Therefore, it is the responsible director who should consider whether the appellant’s request for a change in composition may be justified in view of the procedural history of the present case and the remarks made in the communications with respect to the chances of success for the application when holding OPs: “The applicant has the choice of a decision according to the state of the file as an alternative to OPs, which are deemed to be time consuming on both sides while not leading to grant”.

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

The file wrapper can be found here.

T 1735/08 – In Its Own Time

This decision deals with the following request for correction of the minutes of the oral proceedings (OPs) before the Board of appeal, filed on July 12, 2012:

The Board explained that it did not see any reason to correct the minutes.

The opponent replied as follows, on September 19, 2012:

Here is what the Board had to say on that matter:

*** Translation of the German original ***

[1] Contrary to the opinion of the respondent/opponent 3, as far as the contents of minutes of OPs are concerned, the relevant legal basis is exclusively R 124(1). Accordingly the minutes shall inter alia contain the legally relevant (rechtserheblich ; NB: R 124 in its English version has only “relevant”) statements made by the parties.

[2] In the present context, the decisions of the Board, the operative part (Tenor) of which is incorporated into the minutes of the OPs, and the reasons of which are to be provided later on, are also [considered to be] legally relevant. However, in application of R 124(1) it is not required, nor is it customary in proceedings before the Board of appeal of the EPO, to introduce into the minutes that the Board has expressed a provisional opinion on [compliance with] the patentability requirements before announcing the decision.

[3] When, as here, the decision orders the impugned decision to be set aside and the case to be remitted to the first instance for further processing, the indication of the set of claims and the reasons, why the Board is of the opinion that this set of claims, which forms the basis for the further decision of the first instance, does indeed comply with certain requirements governing patents (Patentierungs-voraussetzungen) (such as A 123(2) in the present case), are not given in the order of the decision or in the minutes of the proceedings but in the reasons for the decision. This way of proceeding corresponds to the requirement that the operative part of the decision (Entscheidungsformel) be concise.

[4] Moreover, the operative part given in the minutes exactly corresponds to the text […] read out by the chairman of the Board during the OPs after the factual debate had been closed.

[5] Insofar as the respondent/opponent 3, in its letter dated September 19, 2012, justifying the request for correction of the minutes, refers to a passage annexed to the summons to OPs and dated March 20, 2012,  this [submission] cannot be successful because, as clearly and unambiguously stated at the beginning of the communication, this is a provisional and non-binding opinion the purpose of which is to prepare the OPs. […]

The request for correction of the minutes of the OPs is dismissed.

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

The file wrapper can be found here.

T 1518/11 – Too Late

In this examination appeal the appellant withdrew the appeal … too late.

[2.1] After the board had announced its decision to dismiss the appeal against the refusal of the application in suit and closed the oral proceedings (OPs), the appellant stated by letter dated 23 August 2013 that the appeal was withdrawn. However, since the decision had been announced at the OPs held on 13 August 2013 and thereby became effective on that day, the appeal proceedings are terminated (T 843/91 [10]). Given that by virtue of the board’s decision the refusal became final and no appeal lies from decisions of the boards, the appellant’s submission made after the announcement of the board’s decision is without any legal effect.

[2.2] Furthermore, a statement of withdrawal of appeal made by the (sole) appellant after the final decision of the board has been announced at OPs does not relieve the board of its duty to issue and notify to the appellant the decision in writing setting out the reasons for the decision (T 1033/04 [3]).

The booklet “Overview of the appeal proceedings according to the EPC” by Meinders, Beckedorf and Weiss – which I find very useful – has an interesting passage on withdrawals in the course of appeal proceedings (p. 48):

“… Another situation which may make withdrawing the appeal an interesting option for an appealing applicant/patent proprietor is when the Board has issued a summons with a preliminary opinion making clear that the appeal has little chance of success. If they are the sole appellant, withdrawing the appeal at that stage will lead to immediate termination of the appeal proceedings (except where a decision on the apportionment of costs in opposition-appeal proceedings is necessary), with no written reasoned decision being issued. Thus, negative effects elsewhere for family members of the application or patent may be avoided. This is the principle of party disposition in appeal, i.e. the party determines whether, what and to what extent it is appealed and how the appeal proceedings are pursued.

Such a situation may even arise as late as at oral proceedings before the Board. However, in that case the withdrawal of the appeal must take place before the Board has announced the decision. In written proceedings, such a withdrawal has to take place before the Board has delivered its decision to the internal post, i.e. the party should enquire with the Registry of the Board about the status of the case.” (my emphasis)

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

The file wrapper can be found here.

T 500/11 – You May Pick It

Claim 1 of the auxiliary request before the Board read:

1. Method for the production of trichlorosiliane by reaction of silicon with HCl gas at a temperature between 250° and 1100°C, and an absolute pressure of 0.5 – 30 atm in a fluidized bed reactor, in a stirred bed reactor or in a solid bed reactor, characterised in that the silicon supplied to the reactor contains between 550 and 10 000 ppm chromium. (my emphasis)

Claim 1 as granted (and of the main request) was identical, only the lower limit of the chromium content was different (50 ppm). However, the Board had found this claim to lack novelty over document D1, which disclosed a range of 5 to 200 ppm.

In what follows, the Board examines compliance of the auxiliary request with A 123(2):

[3.1] The amendment in claim 1 at issue corresponds to the restriction of the range “between 50 to 10000 ppm of chromium” by the lower end value of 550 ppm. It is uncontested that there is a literal basis for this specific value in example 3 of the patent in suit, however not in combination with the other features of amended claim 1 under dispute.

[3.2] [The opponent] argued that the amendment consisted of an inadmissible intermediate generalisation in the sense of T 962/98, because the feature 550 ppm Cr was inextricably linked to the other features of the process according to example 3 – namely the type of reactor, the pressure and temperature, the particle size and the contact time – and thus this specific value could not be arbitrarily extracted from its context. [The opponent] referred also in this respect to paragraph [0003] of the patent which disclosed that the “selectivity and reactivity will depend strongly on the process temperature when silicon and HCl is reacted”. This would make clear that the temperature was a feature which was inextricably linked to the selectivity to TCS.

[3.3] The question to be answered now is whether the feature “550 ppm Cr” is inextricably linked to the other features defined in Example 3 of the patent in suit.

The board observes in this respect that there is no doubt that not only the concentration of chromium has an influence on the selectivity of TCS but also other parameters too, such as e.g. the particle size, the pressure, the temperature, and the contact time in the reactor. All these features however are parameters which may be varied individually and each of these variations would necessarily lead to a different result on the selectivity to TCS.

If the feature “550 ppm chromium” was inextricably linked to specific other parameters of Example 3, this would mean that the selectivity to TCS would only be achieved in the definite combination of “550 ppm chromium” with the specific other parameters of example 3. This however is manifestly not the case here.

Moreover, according to paragraph [0020] of the patent in suit, the addition of chromium to silicon is described very generally as improving the selectivity to TCS in the reaction of silicon with gaseous HCl.

It follows from the above considerations that the different parameters, and in particular those in Example 4, can be varied independently one from another and that there is no reciprocal relationship, which would imply that the concentration of chromium is part of an entanglement in which a variation of the other parameters is not allowed.

[3.4] The question at issue was already addressed in several decisions, in particular in T 273/10 or T 962/98, to which the board refers in the following paragraphs.

[3.4.1] According to T 962/98 [2.5], an intermediate generalisation would be admissible if the skilled person could recognise without any doubt from the application as filed that the characteristics taken from a working example were not closely related to the other characteristics of the working example and applied directly and unambiguously to the more general context.

[3.4.2] In decision T 273/10 [14.2-3], a claim amended by inclusion of a bundle of features extracted from a specific embodiment had been found allowable because the bundle of features proposed as an amendment comprised all the features essential for the performance of the invention. Further, according to T 273/10, those features of the embodiment which did not contribute to solving the problem underlying the invention did not have to be part of the claimed subject-matter resulting from the amendment.

[3.4.3] In the case at issue, as explained in point [3.3] above the aim of the invention – namely increasing the selectivity to TCS – is merely achieved by addition of selected amounts of chromium to silicon and thus this feature is not “closely related to the other characteristics of the working example and applies directly and unambiguously to the more general context” as required in T 962/98.

[3.4.4] The present decision is also in line with decision T 273/10 since the proposed amendment comprises the feature essential for the performance of the invention, namely a certain amount of chromium, and moreover those features of the embodiment which do not contribute to solve the problem underlying the invention are not part of the claimed subject-matter resulting from the amendment.

[3.5] It follows from the above considerations that the gain of selectivity is solely due to the presence of chromium in the silicon feedstock, and that the picking out of the value 550 ppm from the working example 3 is therefore plainly acceptable in the case at issue, with the consequence that claim 1 of this request meets the requirements of A 123(2).

Dependent claims 2 to 6, which have a basis in the corresponding dependent claims 2 to 6 of the application as filed, also meet the requirements of A 123(2).

I for one am not very comfortable with the fact that isolated values taken from examples may become boundaries of claimed ranges, which I consider to be a completely new teaching, but there seems to be some consensus that this is alright.

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

The file wrapper can be found here.

T 518/10 – Three In A Row

This decision is interesting on several counts; you might want to have a look at the discussion of the burden of proof regarding sufficiency of disclosure (point [7] of the reasons).

In what follows, you will find two passages concerning the patent proprietor’s request for a postponement of the oral proceedings (OPs) as well as a related A 106 objection.

Request for postponement of OPs

[2.1] With letter of 21 February 2013, the [patent proprietor’s] representative requested postponement of OPs scheduled for 9 April 2013 for the reasons that he was summoned to three OPs before different boards on three consecutive days preventing him from adequately preparing each case. As a further and more serious reason, the representative referred to an explosion at the production plant of the [patent proprietor], which had restricted the contact with his client thereby making it almost impossible to adequately deal with the present case.

[2.2] Both [opponents] objected to a postponement arguing that the [patent proprietor’s] representative had already been aware of the three hearings on three consecutive days by mid-December 2012. Furthermore, they submitted that, judging from the various activities of the [patent proprietor] in other patent matters, the [patent proprietor] was obviously not prevented by the explosion in dealing with those matters. The [opponents] believed that the [patent proprietor’s] request was a deliberate attempt to postpone a decision, “which could harm there global legal and public relation position”.

[2.3] According to Article 15(2) RPBA, the board has the discretion to exceptionally allow a change of date for OPs. Examples for circumstances that can be taken into account in exercising this discretion are given in the notice of the Vice-President of DG3 dated 16 July 2007 concerning OPs (OJ EPO 1/2013, Supplement, pages 68 to 69, hereinafter “the Notice”). Furthermore, in addition to the [patent proprietor’s] interest, the board has also to take into account the internal organisational burden of the board and the interest of other parties concerned, such as the [opponents] in the present case or parties in other appeals, since any postponement of a hearing in a specific case may cause delay in other proceedings.

[2.4] Article 15(2) RPBA and point 2 of the Notice state that the request to fix another date shall be filed as soon as possible after the grounds preventing the party concerned from attending OPs have arisen.

The board observes that the [patent proprietor’s] representative became aware of the fact that he was summoned to OPs on three consecutive days in December (date of acknowledgement of receipt of the third summons in the appeal T 1902/09 is 20 December 2012). Accordingly, if he was of the opinion that this situation adversely affected his professional duties to his clients, he could and should have filed a request for postponement immediately. No satisfactory reason was provided as to why the representative had waited two month to file the request. Furthermore, since the summons in T 1902/09 was received after the summons in the present case, a request for postponement should have been made for the former.

[2.5] According to point 2.3 of the Notice, every request for fixing another date for OPs should contain a statement why another representative cannot substitute for the representative prevented from attending (which was strictly speaking not the case here, since there was no actual clash of dates). The board notes that the [patent proprietor] has signed a general authorisation to Elkington and Fife LLP, and the representative has not provided convincing reasons as to why no other representative of Elkington and Fife LLP could substitute for the representative.

[2.6] The board also did not see sufficient reasons as to why the explosion in the [patent proprietor’s] firm impeded OPs from taking place on the scheduled day. It was appreciated that patent matters might not be amongst the most pressing issues after such a tragic event.

However, the explosion occurred at the beginning of November 2012 and, according to the representative’s submission, on 3 December 2012, Mr Huart, the General Counsel of the [patent proprietor], was informed of the summons to OPs for the beginning of April. If there had been concerns that this date would pose a problem for the [patent proprietor], a request for postponement of OPs should have been filed immediately.

Furthermore, the representative had apparently established contact with his client on 20 February 2013, and no clear and convincing reasons were provided as to why adequate preparation for the OPs as scheduled would not be possible with still six weeks to go, in particular since the board’s communication sent with the summons had not changed the relevant legal and technical framework and it could therefore be legitimately expected that the [patent proprietor] had previously made its complete case as required by Article 12(2) RPBA.

[2.7] For the aforementioned reasons, the board was not satisfied that the [patent proprietor’s] interest for a postponement should, exceptionally, outweigh the interests of other parties and the public. Accordingly, the request for postponement was refused and the date of the OPs maintained. […]

Objection under R 106 and A 112a(2)c)

[8.1] At the end of the OPs, the [patent proprietor] raised an objection under R 106 alleging that its right to be heard under A 113(1) had been violated. It argued that, by refusing its request for postponement of the OPs and not admitting documents E55, E56 and E60 into the appeal proceedings, the board had denied the [patent proprietor] an adequate opportunity to prepare OPs and to properly present its case.

[8.2] The board notes at the outset that the objection pursuant to R 106 was raised by the [patent proprietor] towards the end of OPs after the board had informed the parties of its negative opinion regarding sufficiency of disclosure of the subject-matter claimed in claim 1 of auxiliary request 3. The objection, however, pertained to alleged procedural defects that had arisen in the proceedings several hours (the refusal to admit documents E55, E56 and E60 into the appeal proceedings) and even several weeks before (the maintenance of the date of OPs by communication of 6 March 2013).

The board is aware that R 106 lays down an admissibility requirement for a petition of review the examination of which is within the jurisdiction of the Enlarged Board of Appeal. Nevertheless, the point in time at which an objection is raised affects the alternatives of responses available to the board concerned. As the Enlarged Board has consistently held, the requirement pursuant to R 106 to raise an objection should enable the board confronted with the objection to react immediately and appropriately by either removing the cause of the objection or, as provided in R 106, by dismissing it (R 4/08 [2.1]; R 14/11 [2.5-6] with further references).

With respect to the issue of postponement of OPs, the board had no other option than to dismiss the objection, since at the end of a full day of OPs the board was unable to revert to its communication of 6 March 2013 to maintain the date of the OPs. The [patent proprietor] should have raised any objection against this communication immediately after notification of said communication (see R 3/08 [1.4]; R 9/09 [1.5]).

As regards the refusal to admit documents E55, E56 and E60 into the appeal proceedings, the board informed the parties before lunch of its conclusion on this issue. At that point in time, the [patent proprietor] should have been aware of any possible impairment of its capability to fully argue its case for auxiliary request 3 with regard to the issue of sufficiency of disclosure. By adopting a wait-and-see attitude, the [patent proprietor] constrained the board’s possibilities to react to the objection raised subsequently under R 106.

However, these preliminary considerations were not decisive for dismissing the objection. The board’s reasons are as follows:

[8.3] The decision to change the date of OPs is within the authority and discretion of the board (Article 15(2) RPBA). It may or may not be exercised in the favour of the party requesting it, based on the circumstances of the case and the reasons provided by said party. In the present case, the board, in view of the arguments that were submitted by the parties, was not satisfied that a change of date was justified and, informing the parties of its reasons by fax and post on 6 March 2013, refused the [patent proprietor’s] request […]. In particular, the board noted that the explosion at the [patent proprietor’s] factory had already occurred one month before it had received the summons and that no satisfactory reasons had been provided as to why the request was filed only one and a half month before OPs were scheduled to take place. The board moreover observed that the [patent proprietor’s] representative had failed to provide clear reasons as to why the remaining time was not sufficient to prepare for the OPs.

The [patent proprietor] in its subsequent letter dated 8 March 2013 did not contest the board’s refusal of the request for postponement of the OPs and made no attempt to sustain or supplement its request for postponement by filing additional arguments or documents. Neither in the [patent proprietor’s] letter of 8 March 2013 nor during OPs did it raise, much less substantiate, objections that the board had exercised its discretion according to the wrong principles, or without taking into account the right principles or in an unreasonable way. Furthermore, the [patent proprietor] was aware of the issues under dispute since the beginning of the appeal procedure. It had ample opportunity to provide all the necessary facts, evidence and arguments at a much earlier stage of the proceedings, but decided not to do so. The board is therefore of the opinion that its discretionary decision not to change the date of the OPs, did not violate the [patent proprietor’s] right to be heard under A 113(1). For the sake of completeness, the board notes that the [patent proprietor] had an adequate opportunity to submit arguments regarding the issue of postponement. There was thus also no denial of the right to be heard in arriving at the decision.

[8.4] Concerning documents E55, E56 and E60, the board notes that the question of their admission was discussed at the OPs. During this discussion, the [patent proprietor] was not limited in its pleadings and was able to fully present all its arguments as to why it considered their admission into the appeal proceedings justified. This was not contested by the [patent proprietor]. Its objection was rather directed to the fact that the board did not exercise its discretion in the [patent proprietor’s] favour.

The board notes that, in inter partes proceedings, each party has an obligation to take an active part in the proceedings and to provide facts, evidence and arguments to support its case as early and as completely as possible (R 13/11 [18]; R 2/08 [9.10]; R 12/12 [6]). As set out in point 4.2 above, any amendment to a party’s case after it has filed its grounds of appeal or reply is not a matter of right, but lies within the discretionary power of the boards of appeal, which is exercised with due considerations of the relevant circumstances of the case (Article 13(1) RPBA).

In the board’s opinion, Article 13 RPBA is not in contradiction with a party’s right to be heard according to A 113(1), even when amendments to a party’s case are not taken into consideration. It is at the discretion of the boards, in the interest of a fair and reliable conduct of the proceedings as well as procedural economy, not to take into account submissions of a party, which has failed in its obligation to properly advance the proceedings, provided that the party concerned has been given adequate opportunity to present its case, yet for reasons for which it alone is responsible, has not made adequate use of this opportunity. Furthermore, the admission of a late-filed submission of a party should not lead to the opposing party being at a disadvantage in exercising its right to present its case in the time available.

In the present case the [patent proprietor] was aware of possible deficiencies in its case right from the beginning of the appeal proceedings. It had reasons and adequate opportunity to present the necessary evidence at a much earlier stage of the proceedings, but decided not to do so, to the disadvantage of the [opponents], who were confronted very late in the proceedings for the first time with an attempt to overcome an issue, which was already decisive for the decision under appeal and which was again addressed in the [opponents’] replies. Furthermore, the board notes that an objection that the board had exercised its discretion arbitrarily has not been advanced, let alone substantiated by the [patent proprietor].

Since the [patent proprietor] had adequate opportunity to comment on all relevant points related to the question of admission of documents E55, E56 or E60 before the board decided on their admission into the appeal proceedings, the board is of the opinion that the [patent proprietor’s] right to be heard had not been violated.

[8.5] The objection under R 106 was therefore dismissed.

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T 184/11 – Advertising It Is

The present appeal was filed by the patent proprietor after the Opposition Division (OD) had maintained the opposed patent in amended form.

One of the issues discussed by the Board was the public availability of one of the documents which the OD had considered to be part of the prior art pursuant to A 54(2).

*** Translation of the German original ***

[3.1] The [patent proprietor] held the view that document MF1 was not an advertising booklet (Werbebroschüre) but a product data sheet, so that, according to the case law of the Boards of appeal (T 278/09 and T 804/05) one could not assume that document had been broadly distributed (allgemein verteilt).

According to the case law of the Boards of appeal it is not sufficient to merely weigh the probability of the public availability of an allegedly novelty-destroying product data sheet, the public availability of which is only based on assumptions (see T 278/09 [1.3.1]).

Thus at first it has to be clarified whether document MF1, which had been filed in its original form (and not sealed in stiff foil) during the appeal proceedings, is an advertising brochure or a product data sheet.

[3.2] The Board is of the opinion that a product data sheet provides information on newly developed or improved products rather than on the marketing of a product; therefore, its information content is different from what is found in an advertising brochure (cf. also T 278/09 [1.3.1]).

The [Board] agrees with the [opponent] in that document MF1 does not contain any detailed technical data such as the indication of dimensions, distances and gaps allowing the installation of or the conversion to an automatic fifth wheel, but only technical information of a general nature. Like the [opponent], the Board understands the indication “ECHANGE SEMI = 1 Minute!” on the front sheet of MF1 to be a clear further indication that the document MF1 merely contains advertising information for potential customers. This is also corroborated by the images and the indication of the contact details of the Serma company. Thus the Board, very much like the OD, comes to the conclusion that document MF1 is an advertising brochure.

[3.3] As the present situation concerns an advertising brochure, the OD was justified in applying decision T 804/05 which also dealt with the public avaiability of an advertising brochure. In this decision (see point [2] of the reasons) decision T 743/89 was considered to be relevant for deciding when the advertising brochure was made available to the public. As far as the standard of proof for the assessment of evidence is concerned, T 743/89 applied decision T 381/87, in which the competent Board had decided that in relation to an issue of fact when a document was first made available to the public, [the EPO] had to decide what was “more likely than not” to have happened having regard to the available evidence, on the balance of probabilities, and that this was the normal standard of proof in proceedings of this nature (see point [4.4] of the reasons). Therefore the Board is of the opinion that in the present case the OD, based on decision T 804/05, in the end has applied the principles of decision T 381/87 and thus applied the balance of probabilities. In decision T 750/94, which has also been cited by the [patent proprietor], there is also a reference to decision T 381/87, followed by this statement:

“When an issue of fact is being examined and decided by the EPO on the balance of probabilities, the more serious the issue the more convincing must the evidence be to support it. If a decision upon such an issue may result in refusal or revocation of a European patent, for example in a case concerning alleged prior publication or prior use, the available evidence in relation to that issue must be very critically and strictly examined. A European patent should not be refused or revoked unless the grounds for refusal or revocation (that is, the legal and factual reasons) are fully and properly proved.” (see headnote 1 and point [4] of the reasons).  

There is no indication in the reasons of the impugned decision that the OD has not critically and strictly examined the available evidence.

For the above reasons [the Board] cannot endorse [the assertion of] the [patent proprietor] according to which the OD has not applied the principles developed in the case law of the Boards of appeal in its decision.

[3.4] The OD also provided reasons why, based on the indications contained in the advertising brochure, the original of which had been submitted to it, it has reached the understanding that this brochure had to be considered to have been made available to the public before October 16, 1996. The Board shares its opinion that in particular the additional indication “A PARTIR DU 16 OCTOBRE 1996 FUTUR NUMERO: INDICATIF (04)” [as of October 16, 1996, future [telephone] number: dialling code (04)] it was possible to assume that the advertising brochure was distributed before October 16, 1996, or at least shortly after that date and, therefore, long before the priority date of the patent in suit (May 14, 2004). Moreover, the indication “Réf. 10 95” on the left margin of MF1 appears to be the date of printing rather than a product number, because October 1995 is one year before the above date of October 16, 1996, which means that a printing date “October 1995” fits into the timing and is, in the opinion of the Board, very likely. As document MF1 makes clear that this advertising brochure was made available to the public before the priority date of the patent in suit, the evidence MF4 to MF7. This is all the more true because there is nothing in this evidence which would contradict the above conclusion of the Board. Therefore, it was not necessary to hear the witness, which had been offered.

[3.5] For the above reasons the Board sees no good reason to criticize the decision of the OD according to which document MF1 was part of the state of the art within the meaning of A 54(2) EPC 1973.

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T 184/11 – A Sleeping Beauty

The present appeal was filed by the patent proprietor after the Opposition Division had maintained the opposed patent in amended form.

The opposition had been filed by Fontaine International Europe Ltd. (“Fontaine”).

On April 8, 2013, the representative of the opponent requested the transfer of the opponent and respondent status to the parent company of Fontaine, a company called The Marmon Group Ltd (“TMGL”) as of December 31, 2010. Several letters were filed as evidence for the transfer.

On April 18, 2013, the representative filed further evidence for the transfer, including an excerpt from a commercial register.

Oral proceedings (OPs) were held on May 14, 2013. During the OPs, the representative of the opponent filed further evidence for the transfer.

The decision has quite a lot to offer, so I have decided it to present it in two posts. Today we will have a look at the discussion of the transfer of the opponent status.

*** Translation of the German original ***

[2.1] The status as an opponent cannot be freely transferred. (G 2/04). The procedural position of the opponent can, as implicitly acknowledged in R 60(2) EPC 1973 and R 84(2), be transferred to the heirs, and accordingly the access of the universal legal successor to the opponent status is admissible (G 4/88 [4]). An opposition pending before the EPO may also “be transferred or assigned to a third party as part of the opponent’s business assets together with the assets in the interests of which the opposition was filed” (G 4/88 [order]). Therefore, from a legal point of view (rechtsgeschäftlich) a transfer of the party status in pending opposition or opposition appeal proceedings is only admissible if [the party status] is transferred together with the business assets (Geschäftsbetrieb) or the part of the company in the interests of which the appeal was filed (T 659/92; see also Case Law, 6th edition, 2010, VII.C.5.1). Contrary to the case of universal legal succession, however, the previous party to the proceedings remains entitled and legally obligated as long as the evidence concerning a legal transfer of the party status has not been provided and no corresponding request has been filed with the EPO, because the transfer of party status is only effective when it is requested and proven (see T 870/92 [3.1], which has been confirmed in many later decisions, such as T 956/03 cited by the [patent proprietor]; cf. T 1421/05 [3.3]; T 1137/97 [4] and T 1032/10 [1-3]).

[2.2] In the present case the [opponent] was able to prove, by means of pages 1 to 4 extracted from the commercial register held by the state-owned office Companies House (B6) that at the time of the OPs before the Board of appeal the Fontaine company was being liquidated but had not yet been dissolved. As also argued by the [opponent], according to the applicable U.K. law, the Fontaine company, which was being liquidated was still existing as a legal person (“dormant company”). Thus the Fontaine company was still party [to the proceedings] at that time. Nor is there any indication that the professional representative could not represent the Fontaine company any more, because her authorisation had not been withdrawn by the Fontaine company or by a liquidator.

[2.3] It is clear from the letter dated December 20, 2010, and the transfer agreement dated December 31, 2010, that the Fontaine company has transferred its business assets concerning the manufacture and sale of parts for the truck industry in Europe to TMGL immediately after its close of business on December 31, 2010. The Board is of the opinion that the “Excluded Assets” mentioned on page 3 of the agreement (B3) only comprise the share capital which the seller Fontaine held in the company Big D Fifthwheels & Landing Legs Ltd., and do not call into question the transfer of the above mentioned business assets. As the present case concerns plug-in coupling systems for connecting wires between a towing vehicle and a trailer, it can also be said that the opposition was filed in the interests of these business assets.

[2.4] The letters dated December 20, 2010, (B1) and January 19, 2011, (B2) as well as the extract from the commercial register held by the state-owned office Companies House (B4) prove that the company TMGL exists as an independent legal person.

[2.5] It can also be seen from the letter dated January 19, 2011 (B2) that MHT Europe is not an independent legal person but only a commercial department of the TMGL company (“a trading division of TMGL”). This is also confirmed by page 5 of the extract from the commercial register held by the state-owned office Companies House (B6) because there is no company “MHT-Europe” mentioned in the alphabetic list of registered companies. A similar statement can be made for Fontaine Fifth Wheel and MHT (which is the abbreviation of “MARMONHIGHWAYTECHNOLOGIES”, as can be seen from the 2-page Internet printout B7) because there is no registration of those names on pages 1-3 and 5, respectively, of the extracts from the commercial register held by the state-owned office Companies House (B6).

[2.6] For the above reasons the Board reaches the conclusion that the full evidence for a legal transfer of the opposition together with the business assets of the opponent and respondent Fontaine to TMGL as of October 31, 2010, has only been filed during the OPs before the Board of appeal and that, as a consequence, the request for a transfer of the party status of the opponent and respondent could only be allowed at that moment.

Even though the request for a transfer of the party status and the documents serving as evidence were only filed at a very late stage of the appeal proceedings, the Board did not see any good reason not to take account of the request and the corresponding evidence. In particular, the Board could not endorse the opinion of the [patent proprietor] according to which decision T 956/03 had to be applied by analogy in such a way that in case of a transfer occurring before the expiry of the time limit for filing an appeal the evidence also had to be provided before the expiry of the time limit for filing an appeal. In decision T 956/03 the Board followed the established case law according to which a transfer cannot be acknowledged before the day on which appropriate evidence for the transfer has been filed (see T 956/03 [4] as well as point [2.1] above) and expressed [the opinion] that this was desirable for the sake of legal security in order to ensure that the identity of an opponent was known. In case T 956/03 the Board also had to decide on the admissibility of the appeal filed by one of the appellants which had claimed to be the legal successor of one of the opponents of the first instance proceedings without having filed corresponding evidence within the time limit for filing an appeal. The principle established in decision T 956/03 [7], according to which the entitlement of the [person] under consideration to replace the opponent also had to be established by filing the required evidence before the expiry of the time limit for filing an appeal if the transfer had taken place before the expiry of the time limit for filing an appeal, has to be seen in the light of that factual situation. The present case does not concern the question of whether the appeal filed by an alleged legal successor is admissible. Rather, the opponent who had taken part in the first instance proceedings at first acted as a respondent and the request for a transfer of the party status was only filed in the course of the appeal proceedings. As a consequence, the Board is of the opinion that an analogous application of the above mentioned principle to the present case is not justified. This is also in line with the case law of the Boards of appeal according to which the party status of the opponent in appeal proceedings can also be transferred to a third party after the expiry of the time limit for filing an appeal, independently of whether the opponent is the appellant or the respondent (see also T 670/95 [2]), as long as this does not make the admissibility of the appeal questionable.

[2.7] Ultimately the opponent and respondent status has been transferred as of May 14, 2013, from the Fontaine company to TMGL, with whom the appeal proceedings were continued. These findings were communicated to the parties during the OPs held on May 14, 2013, subsequent to the corresponding discussion and the deliberation of the Board.

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T 2289/09 – Unclear Yet Relevant

Claim 1 of the main request before the Board read:

An apparatus (1) for a sorting system comprising an activating member (2), a fastening bracket (3), and a discharge arm (4) which at an end part (5) is pivotally connected with the fastening bracket (3) at a side (6) of a conveyor (7), where said discharge arm (4) by means of said activating member (2) is adapted for being swung between a passive position (9) approximately parallel to said side (6) of the conveyor (7) and a number of active angular positions (8) in relation to the conveying direction (A) of the conveyor (7), the activating member (2) being constituted by an electrically driven stepping motor or servomotor having a control unit being adapted for determining a pattern of motion and/or speed profile of the discharge arm (4), and that said control unit is a adapted for receiving at least one control signal from a number of sensors (16) being adapted for determining the lateral and longitudinal position of an item (11) on the conveyor (7), and which are operatively connected with the activating member (2), wherein said control unit is pre-programmed and adapted for utilizing said control signal from the sensors (16) for determining a pattern of motion and/or a speed profiler (correctly: speed profile) of the discharge arm (4) for causing the discharge arm (4) to lead the items (11) selectively to a predetermined discharge position among a number of discharge positions (B, C, D) along said side (6) of the conveyor (7).

[1.3] In addition to the features of claim 1 as maintained present claim 1 comprises the group of features defining that

(g) said control unit is pre-programmed and adapted for utilizing said control signal from the sensors (16) for determining a pattern of motion and/or a speed profile of the discharge arm (4) for causing the discharge arm (4) to lead the items (11) selectively to a predetermined discharge position among a number of discharge positions (B, C, D) along said side (6) of the conveyor (7).

[1.4] Concerning the understanding of the group of features (g) it is common ground that these features encompass three alternatives concerning the control unit which is pre-programmed and adapted for utilizing the control signal from the sensors for determining

(g1) a pattern of motion of the discharge arm

(g2) a speed profile of the discharge arm and

(g3) a pattern of motion and a speed profile of the discharge arm (combination of alternatives (g1) and (g2))

for causing the discharge arm to lead the items selectively to a predetermined discharge position among a number of discharge positions along the side of the conveyor.

[1.5] Concerning the understanding of the alternatives (g2) and (g3) in the context of the group of features (g) and the combination of features (a) to (f) the meaning of the expression “speed profile” remained unclear, as asserted by the [opponent].

[1.5.1] The explanation given by the [patent proprietor] that the expression “speed profile” is linked to the speed and relative distance of adjacent items on the conveyor in conveying direction and the effect this has on the control of the discharging arm […] is, as indicated by the Board during the oral proceedings, in contradiction to the group of features (g) referring explicitly but also exclusively to a “speed profile of the discharge arm”.

[1.5.2] The r[patent proprietor’s] explanation is, as likewise indicated by the Board during the oral proceedings, furthermore without any support in the disclosure of the patent in suit as will be discussed in the following concerning the compliance of the group of features (g) with the requirements of A 123(2).

Admissibility of amendments in claim 1

[2.1] Although, as indicated above, the alternatives (g2) and (g3) remain without a clearly derivable meaning where is concerns the speed profile it has not been disputed that their introduction into claim 1 adds information to the teaching of this claim.

The group of features (g) encompassing these alternatives thus cannot be ignored when examining these amendments under A 123(2). […]

The patent was finally revoked because of non-compliance with A 123(2).

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