T 2075/11 – It’s The Economy, Stupid

As far as I can see, there is no clear answer in the case law to the question whether a patent proprietor can revert to the patent as granted in opposition appeal proceedings if it has not requested maintenance as granted before the Opposition Division (OD).

In decisions such as T 105/09 and T 755/00 the patent proprietor has been allowed to do so, provided that this behaviour was not the expression of an abuse of procedure.

However, nowadays, some (perhaps most) Boards see things differently, as the present decision in a revocation appeal case illustrates.

*** Translation of the German original ***

[2.2] It is true that pursuant to Article 12(1) RPBA appeal proceedings shall be based on the notice of appeal and the statement of grounds of appeal, but pursuant to paragraph (4) of the same article the Board has the power to hold inadmissible requests which could have been presented in the first instance proceedings, although they comply with the requirements of paragraph (1).

There is no doubt that in the present case the claims as granted could have been part of the first instance proceedings. However, the patent proprietor has limited itself during the opposition proceedings and has not pursued the granted version, so that the first instance could not decide on the granted version.

[2.3] The factual situation underlying decision T 933/04 cited by the [opponent] is essentially the same as in the present case: the appellant (patent proprietor) also abandoned the granted version during the opposition proceedings and pursued a limited version in order to circumvent an objection of the OD, but during the appeal proceedings it wanted to revert to the granted version. The Board was of the opinion that the patent proprietor had abandoned its right to have a reasoned decision of the OD on the patent as granted. As a consequence, it did not admit the request to maintain the patent as granted.

[2.4] Even if the Board would not asses the corresponding behaviour of the [patent proprietor] in the present case as an abandonment of the granted version, the admission of this request that has only been filed during the appeal proceedings contravenes procedural economy. As a matter of fact, if it admitted the request, the Board would have to decide on this request for the first time, which is not in line with its role as a reviewing body (Überprüfungsinstanz), or to remit the case, which would considerably delay the proceedings and increase the costs incurred by the adverse party.

As Article 12(4) RPBA has precisely the purpose of avoiding such situations, the Board has not admitted the sole request of the [patent proprietor].

[2.5] The [patent proprietor] has explained that its procedural behaviour during the first instance proceedings had the purpose of accelerating the proceedings because, in view of the opinion of the OD expressed in the summons it thought that it was not appropriate to defend the granted version.

However, the Board cannot see how this behavior could accelerate the proceedings. Quite to the contrary, the fact that there is no decision on this request delays the entire first and second instance proceedings.

This argument, therefore, cannot prompt the Board to exercise its discretion in another way.

[3] As there is no request that is both admissible and agreed upon by the [patent proprietor] (A 113(2)), the appeal has to be dismissed.

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J 2/12 – When Wrong Means Missing

This decisions presents us with a complex procedural situation, and a quite liberal interpretation of R 56. The appeal was filed against the decision of the Receiving Section (RS) refusing various requests of the applicant under R 56.

The application had been filed on April 18, 2008 with a description, 13 claims and 10 sheets of drawings numbered 1/11 to 10/11, comprising Figures 1 to 10 respectively. The application claimed priority from a Japanese application.

On June 23, 2008 the EPO issued a communication under R 56(1) and A 90(1), in which it informed the applicant that “Figure 11”, which was mentioned and described on page 13 of the description, was missing. The applicant was invited to file the missing Figure 11 within two months.

With a letter dated June 30, 2008 the applicant filed a set of drawing sheets numbered 1/11 - 11/11, comprising Figures 1 to 11 respectively, as “replacement drawings”. Figures 1 to 10 were different drawings to those submitted with the application, and sheet 11/11 showed a Figure 11. The applicant requested that the date of filing of the application remain April 18, 2008. It noted the newly filed drawings were identical to those filed with the Japanese application, from which priority was claimed.

By letter dated August 11, 2008 the applicant requested that an additional priority claim (to a U.S. application) be added. The applicant enclosed a certified copy of this document which contained 11 drawing sheets numbered 1/11 to 11/11 comprising Figures 1 to 11 respectively. On August 22, 2008 this request was granted and confirmed to the applicant.

In a further letter, the applicant stated that as a result of an error in the representative’s office the drawings as originally filed were not the drawings intended to be filed. The correct drawings were those filed with the letter of June 30, 2008. For the purposes of R 56(3) the applicant relied on the US priority application instead of the Japanese priority application for its main request, and on the latter application as an auxiliary measure. The applicant stated that the drawings filed on 30 June 2008 were completely contained in the US priority application.

In its decision, the RS dismissed all requests. It noted that the references to Figure 11 in the application should be deemed not to have been made. No matter which of the two priority applications were taken into consideration, the newly filed drawings could not be accepted. R 56(3) could not be used to correct errors in the original application by the filing of a new set of drawings. Rather, the rule was applicable in cases where an application was completed by the filing of missing parts, in particular if they have been omitted.

What was the verdict of the Legal Board?

For those who have little time, here is the headnote:

Where (a) the description as filed with an application includes references to numbered drawings and (b) drawings with corresponding numbering are also filed with the application, different drawings may nevertheless be filed later under R 56 as “missing drawings” if it can be established without having to apply technical knowledge that the drawings originally filed with the application are not the drawings referred to in the description and that the later-filed drawings are the drawings referred to in the description (see point [9]).

For the others, please read on:

[2] The question arising in this case concerns what are to be considered as “drawings referred to in the description [that] appear to be missing” or as “missing drawings”. The answer has in particular a decisive impact on cases in which the application claims priority from an earlier application in which the allegedly missing drawings are completely contained. Under R 56(3), the application date may then remain unaltered and does not have to be re-dated to the date when the correct drawings were subsequently filed.

[3] (a) R 56 reads in its relevant parts:

“(1) If the examination under Article 90, paragraph 1, reveals that parts of the description, or drawings referred to in the description or in the claims, appear to be missing, the EPO shall invite the applicant to file the missing parts within two months. (…)

(2) If missing parts of the description or missing drawings are filed later than the date of filing, but within two months of the date of filing or, if a communication is issued under paragraph 1, within two months of that communication, the application shall be re-dated to the date on which the missing parts of the description or missing drawings were filed. (…)

(3) If the missing parts of the description or missing drawings are filed within the period under paragraph 2, and the application claims priority of an earlier application, the date of filing shall, provided that the missing parts of the description or the missing drawings are completely contained in the earlier application, remain the date on which the requirements laid down in Rule 40, paragraph 1, were fulfilled, where the applicant so requests and files, within the period under paragraph 2; …”.

(b) A 90(1) provides that the EPO shall examine, in accordance with the Implementing Regulations to the EPC, whether the application satisfies the requirements for the accordance of a date of filing. The particular requirements are found in R 40 and R 42.

[4] R 56(1), first sentence, refers to drawings referred to in the description or in the claims which appear to be missing. Hence, where a drawing referred to in the description is missing in the application documents as filed, R 56 is applicable and the missing drawing can be filed later in accordance with the procedure laid down in R 56.

[5] In the present case the RS appreciated that Figure 11, referred to in the description, was missing. The [applicant] then not only filed the missing Figure 11 as the RS had invited it to do, but it also filed a new set of drawings consisting of sheets 1/11 to 10/11, these sheets comprising Figures 1 to 10 respectively. These drawings were to take the place of the sheets with Figures 1 to 10 filed before.

[6] It has been decided by the Legal Board of Appeal that while it is not expressly stipulated in R 56 that an applicant may file on his own motion missing parts of the description or missing drawings, an applicant may nevertheless do so (decision J 27/10 [4]). Thus, the [applicant] was entitled to file on its motion matter that it considered to be missing.

[7] The references to “missing” drawings appearing in each of paragraphs (1) to (3) of R 56 must be interpreted consistently with each other to give a meaningful effect to the rule as a whole (see also J 27/10 [10]). In this respect the Board considers that the “missing drawings” which are referred to in R 56(2) and (3) are the same as the “drawings referred to in the description or in the claims [which] appear to be missing” referred to in R 56(1). There are thus two questions which need to be answered: (1) Does an examination of the application reveal that “drawings referred to in the description” appear to be missing? (2) Were the drawings which the [applicant] filed on 30 June 2008 (the) “missing drawings”?

[8] As to the first question, in the simple case where drawings are referred to in the description but no drawings are filed, the answer will clearly be yes. The same is true where, as in the present case, the description referred to Figures 1 to 11, but no Figure 11 was filed: Figure 11 was clearly missing (see also J 15/12). In the Board’s view, however, there are other situations in which drawings referred to in the description can be said to be missing within the meaning of R 56. So, for example, in the present case the description referred inter alia to Figure 1, which in the Brief Description of the Drawings was said to illustrate an “overall configuration of a tandem-type color image forming apparatus according to the exemplary embodiment of the present invention.” In the Detailed Description of the Embodiments, Figure 1 was further said to illustrate such an apparatus according to the first embodiment of the invention, this embodiment then being described in detail by reference to this drawing. This was done by reference to numerous named and numbered features which were apparently to be found in the drawing. Figure 1 as originally filed, however, while it relates to something called an “Image Processing Apparatus”, contains named and numbered features, none of which are to be found in the description. Similarly, none of the numerous named and numbered features referred to in the relevant passages in the description are to be found in the drawing. It is immediately apparent that the drawing originally filed as Figure 1 is not the Figure 1 referred to in the description. There is simply no correspondence between the description and the drawing at all. Therefore Figure 1 referred to in the description is not Figure 1 as originally filed; the drawing is missing. The same is also true, mutatis mutandis, for each of Figures 2 to 10.

[9] The Board takes full account of the fact that, as was correctly pointed out in the impugned decision, the RS is not expected to carry out any substantial examination which requires explicitly technical knowledge. The RS will not normally do anything more than check that the number of drawings filed corresponds to the number of drawings referred to in the description (as apparently happened in the present case). However, once one’s attention has been drawn to the point it is immediately apparent that the Figures 1 to 10 referred to in the description are not the Figures 1 to 10 as originally filed. As explained above, to appreciate this, one does not need to have any notion of what a tandem-type colour image forming apparatus might be or to understand what the relevant passages of the description are talking about or what the drawings originally filed in fact illustrate. In other cases it may be that such a conclusion cannot be reached so readily but the Board does not have to consider where in general the dividing line should be drawn in such cases. This is because in the present case it is not in doubt that drawings referred to in the description were missing.

[10] The Board therefore concludes that “drawings referred to in the description appear to be missing” from the application as filed (R 56). The Board therefore disagrees with the conclusion of the RS that R 56 is not in any circumstances applicable where the “wrong” drawings are filed as opposed to where an incomplete set of drawings is filed […]. The RS pointed out that R 40 and R 56 were designed to implement Article 5 PLT so that it was helpful to consider the intentions of the drafters of this latter provision, as to be found in the explanatory notes prepared by WIPO’s Standing Committee on the Law of Patents (SPC/1/4, Geneva, 5th session, 1998). There it was stated that the provisions concerning missing matter from the application would apply, in particular, where a sheet of the description or drawings is unintentionally omitted. The Board agrees but the cited situation is clearly not intended to be exhaustive as regards the application of R 56. The Board also disagrees with the RS’s conclusion from this statement that if an application “contains a set of (wrong) drawings, it is not absent of or lacking any drawings”, certainly to the extent that this was meant to be an exhaustive statement about the application of R 56 in this context. The RS also concluded that what the [applicant] was attempting to do was essentially to amend or correct the application under R 137 or R 139 respectively, something that is not permissible via R 56. The effect of the application of R 56 will in one sense always be to amend or correct the application but this is not the relevant issue. The issue is whether drawings referred to in the description were missing.

[11] This conclusion is also consistent with the existing case law of the Boards of Appeal. In J 27/10, the applicant’s case was that although the drawings originally filed were the correct drawings, the description as originally filed was the “wrong” one. The applicant’s request under R 56 to substitute it with the “right” description was refused on the basis that R 56 did not allow some, or all, of the description that was originally filed in order to obtain a filing dated to be amended, replaced or deleted: see point [12] of the reasons. The decision was thus concerned with whether “parts of the description … appear[ed] to be missing” within the meaning of R 56(1) and not with when drawings referred to in the description could properly be considered as missing. In J 15/12, citing J 27/10 but now in the context of missing drawings, it was again said that an interpretation of R 56 that some, or all, of the application documents that were originally filed in order to obtain a filing date could be amended, replaced or deleted would be incorrect. The present decision does not bring these statements into doubt: the effect of the Board’s decision will not be to amend, replace or delete the drawings filed with the original application, since these drawings will remain part of the application.

[12] As to the second question, the evidence necessary to establish that the drawings which the applicant has filed under R 56(2) or (3) are in fact (the) missing drawings will depend on the circumstances.  

In the present case:

(a) It is apparent by simply reading and without the need for any technical knowledge that the drawings consisting of Figures 1 to 11 filed with the letter dated 30 June 2008, together with their named and numbered features, correspond to what is explained in the description, and vice versa.

(b) Further, the Board has compared these later-filed drawings with those in the US priority document. Both consist of identical Figures 1 to 11 with the identical reference numbers. Also the wording of each application, including the descriptions of the figures, is for all intents and purposes identical.

(c) These considerations established to the satisfaction of the Board that the drawings filed by the [applicant] with the letter dated 30 June 2008 were the drawings referred to in the description.

[13] As to the further requirements of R 56(3), the RS accepted that the US priority application could be used for the purposes of R 56 […]. Consequently, the further Japanese priority application need not be taken into consideration separately for the purpose of this appeal.

[14] As a result, the Board concludes that Figures 1 to 11 filed with the letter dated 30 June 2008 are to be treated as missing drawings under R 56(3) and (2). Consequently, pursuant to R 56(3) the date of filing remains 18 April 2008, i.e. the date on which the requirements of R 40(1) were fulfilled. The incomplete application documents filed originally are to be completed by the missing drawings. The drawings with Figures 1 to 11 filed with the letter dated 30 June 2008 must be added to the text of the application. Therefore, the EPO will also have to provide for a publication of the drawing sheets with Figures 1 to 11. […]

The case is remitted to the RS for further prosecution.

Certainly a very generous interpretation of R 56 ...

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J 6/13 – Favourable Prospects

This appeal was filed against the decision of the Examining Division (ED) to refuse the withdrawal of a withdrawal.

On November 9, 2011, the representative communicated to the Office that

The Office sent a confirmation of the withdrawal to the European representative on November 18, 2011. On the same day, the withdrawal was published in the European register. On November 30, the representative was informed that 75% of the examination fee would be refunded, and on December 21? 2011, the withdrawal was published in the European Bulletin.

With letter dated 9 March 2012, a request for correction of the withdrawal of the application under Rule 139 EPC was received. The representative stated that the previous letter was sent in error, as the applicant at no time intended to withdraw the application. Instructions by the applicant to the representative had simply been not to incur any further costs at that point in time.

On August 16, 2012, the ED issued a decision refusing the request for correction. The decision pointed out that the withdrawal had been communicated to the public by way of the register, and even after possible inspection of the complete file a third party could not have suspected that the withdrawal was erroneous.

The applicant filed an appeal.

It argued that although clear and unambiguous, the withdrawal was erroneous and had not been intended. There was every reason to believe that a person reading the complete file of the present application would have had a strong suspicion that the withdrawal of the present application was made in error. The reason for this was “that the IPER was extremely favourable in that all the claims were considered to be novel, inventive and industrially applicable. [A person inspecting the file] would see that the supplementary European Search Report cited no additional documents and that the Search Report explicitly acknowledged that the application meets the requirements of the EPC”, that the “letter of 25 July 2011 confirm[ed] that the Applicant wished to proceed with the application”, and that it would be “unlikely for the application to be abandoned for financial reasons”. As a result, “even the publication of withdrawal of this case would not be enough for third parties to be certain that the application was validly and irrevocably withdrawn.”

Unsurprisingly, the Board dismissed the appeal.

[2] It is undisputed that the applicant’s letter of 9 November 2011 was an unambiguous withdrawal of the application.

[3] According to decision J 19/03 [5],

“[T]he jurisprudence of the Boards of Appeal took as a starting point that, as a general rule, an applicant is bound by its procedural acts notified to the EPO provided that the procedural statement was unambiguous and unconditional (cf. J 11/87 [3.3, 3.6]; J 27/94 [8)) and is not allowed to reverse these acts so that they can be considered as never filed (J 10/87 [12]; J 4/97 [2]).

On the other hand, the Boards of Appeal considered that R 88 acknowledges as a further legal value the desirability of having regard to true as opposed to ostensible party intentions in legal proceedings (T 824/00 [6]) in appropriate circumstances.”

[4] For the particular position of requesting the retraction of a withdrawal after publication in the patent register, decision J 12/03 [7], sets out

“that a request for retraction of a letter of withdrawal of a patent application is no longer possible if the withdrawal has been mentioned in the European Register of Patents at the time the retraction is applied for if, in the circumstances of the case, even after a file inspection there would not have been any reason for a third party to suspect, at the time of the official notification to the public, that the withdrawal could be erroneous and later retracted” (citing with approval decision J 25/03).”

While the applicant has argued that any reason for doubt would suffice the above conditions, the Board disagrees. On a proper reading of the above sentence, the words “not … any reason” cannot be construed to mean that the Board was of the view that in the absence of “not any reason”, just any reason would do. The cited sentence first of all means that there can be no retraction of a withdrawal if there is no reason for third parties to assume that the withdrawal was erroneous. That was the situation the Board was faced with in decision J 12/03. Yet, the cited sentence does not allow an interpretation whereby any reason whatsoever, serious or not, would be sufficient for a retraction of the withdrawal. As will be set out below, the Board holds that in the interest of legal certainty for third parties, and taking into account the public function of the register, a third party upon file inspection must have had good reason to suspect that the withdrawal was made in error in order to allow a retraction thereof.

[5] The Board must thus determine whether in the current case, such good reason was present. According to the appellant, the extremely favourable position of the application and the prospect of a communication under R 71(3) was such a good reason.

[6] In this respect, there are two decisions dealing with the erroneous withdrawal of a promising-looking application.

In J 12/03 [9], the applicant immediately prior to withdrawing the application had paid the annuities. The Board found this an insufficient reason for doubting the applicant’s intentions, as

“a decision to give up an application despite recent payment of a renewal fee is not illogical or unrealistic. The decision to abandon the application can be influenced by many different circumstances. It can e.g. have become necessary to avoid conflicts with other competitors.”

In the second decision, J 18/10 [4], the supplementary search report for the application was extremely favourable, and the EPO had written a letter to the applicant requesting to confirm whether the applicant wished to proceed. Thereupon, the applicant had withdrawn the application. Also in this case,

“… the appellant argued that a third party inspecting the file after the withdrawal would have suspected that the withdrawal was made in error, in view of the positive elements present in the file and the normal expectation that the examination would terminate with the grant of a patent. 

The Board cannot follow that line of argument. Even in a case of the application being in a very favourable position in examination proceedings, it remains possible and consistent that, for other reasons, the applicant decides not to proceed further with its application. It is also possible that the applicant is interested in having its application withdrawn immediately instead of having it simply deemed to be withdrawn later.”

The appellant in response essentially argued that in neither of the two cited cases did the application look as promising as in the current case where the contradiction between the state of the file and the withdrawal was so striking that a third party should have noticed.

[7] It may very well be that in the current case, the application most likely would have proceeded to grant. Yet the question is whether this really matters in determining whether third parties would have perceived a withdrawal as being erroneous. Based on the two decisions J 12/03 and J 18/10, the Board takes the view that the prospects of the application, however promising, are insufficient to infer an obvious or even potential contradiction with a subsequent withdrawal. Patent applications may be withdrawn due to considerations of business strategy, investor preference, shift in portfolios, agreements with competitors, etc. Due to financial considerations, most granted European patents are validated only in a limited number of countries. This is due not to contradictory behaviour or oversight, but to business strategy and optimal allocation of limited resources. These considerations may come into play at any time, even after the recent payment of annuities, or after the communication of a positive search report. The favourable prospects of the application in this case would thus not lead a third party to the conclusion that the withdrawal was possibly made in error. They did not lead the representative who handled the case and who communicated the withdrawal to this conclusion, either.

[8] If the Board were to adopt the appellant’s approach that any reason to suspect an error should lead a third party to the conclusion that the withdrawal was unintentional and that a correction might be requested, the public function of the register under A 127 and the purpose of the file being public after publication of the application would be seriously compromised. Competitors, instead of relying on the register and the contents of the file for their decisions how to pursue or not to pursue certain strategies would have to engage in a guessing game of what the true intentions of the applicant might be. If no good reason for suspecting an error was required, competitors would have to scrutinise the whole file in order to detect any possible contradiction without actually being able to verify whether any kind of potentially inconsistent behaviour was based on error or not. In other words, legal certainty would unacceptably suffer, a result that cannot be reconciled with current case law, e.g. decision J 25/03 [11]. […]

The appeal is dismissed.

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T 677/11 – Filling In The Blanks

This is a revocation appeal in a case where there were no less than four opponents.

Claims 1 and 2 of auxiliary request 2 read:

1. Use of an enzyme resistant sugar polymer,

wherein the enzyme resistant sugar polymer is polydextrose,

for manufacturing an appetite suppressing medicine, which comprises a food intake suppressing amount of said enzyme resistant sugar polymer.

2. Non-therapeutic use of an enzyme resistant sugar polymer,

wherein the enzyme resistant sugar polymer is polydextrose,

for suppressing the appetite of a mammal. (my emphasis)

In what follows, the Board tries to understand what exactly “appetite suppression” is supposed to mean.

[3.1] The subject-matter of claims 1 and 2 of auxiliary requests 2 and 3 is directed to the appetite suppressing effect of an enzyme resistant sugar polymer, namely polydextrose (PDX). Since the claims do not explicitly require that the appetite suppressing effect be on satiation, on satiety or on both, it is necessary to define the meaning of the terms “appetite suppressing medicine” as used in claim 1 and “for suppressing the appetite” as used in claim 2. In the following these terms will be examined together by reference to the term “appetite suppression”. The interpretation of this term - be it narrow and concerning the combined effect on satiation and satiety, or be it broad and concerning each of them independently or in combination – has been at the core of the dispute between the [patent proprietor] and the [opponents].

Regarding the definition of the terms “satiation” and “satiety”, reference is made to E63-Exh1, the affidavit of Prof. Blundell, an eminent expert in the field of nutrition:

“9. Satiation develops during the course of eating and eventually brings the period of eating to a close. Accordingly, satiation can be defined by the measured size of the eating episode.” (emphasis added)

“10. Satiety is the state in which further eating is inhibited and follows the end of an eating episode. I am aware that a procedure used to assess the action of a food on satiety is the preload strategy, where precisely prepared foods are consumed in a “preload”. Effects on later food consumption are then measured over varying periods of time by visual analogue scales, and sometimes by additional eating tests, if appropriate.” (emphasis added)

These definitions confirm what the two terms were generally considered to mean in this field at the priority date of the patent in suit […].

Interpretation of the term in the light of the patent itself

[3.2.1] The [opponents] have pointed out that the patent specification does not contain any explicit narrow definition of the disputed term and the [patent proprietor] has not contested this fact during the oral proceedings. The board acknowledges that the patent uses interchangeably a number of terms related to appetite suppression without attaching particular meaning to any one of them and without any consistency or precision. Terms employed include: suppress appetite, reduce appetite, control appetite, control food intake, reduce food intake, suppress food intake, provide a feeling of fullness, control hunger, provide fullness sensation, suppress hunger, reduce hunger, induce fullness, appetite is depressed, curb the appetite, decrease the intake of food, provide feeling of satiation, give a significant calorie reduction, reduce caloric intake.

All these terms are neither necessarily correlated nor necessarily combined. Therefore there is no basis in the patent for a narrow construction of the term “appetite suppressing” requiring an obligatory cumulative effect on satiation and satiety as alleged by the [patent proprietor].

[3.2.2] In fact the contrary is true. The patent specification […] provides ample evidence that the term “appetite suppression” as used in the claims means a suppression of hunger (satiety induction) or induced fullness (induction of satiation).

Paragraph [0035]:

“By taking the satiety agent, … before a meal or snack for a sufficient time for the satiety agent to be effective in suppressing hunger and/or inducing fullness, the animal, e.g. mammal, will be ingesting less food between meals and/or during meals” (lines 15-17);

“...as the satiety agent … will act to curb the appetite” (lines 22-23);

“Typically, then the satiety agent, … will be taken sometime in a period prior to a meal or at the time a usual meal is eaten, and this will serve to decrease the intake of food at a meal or may even eliminate the meal altogether, as the satiety agent, e.g. polydextrose, … may provide a sufficient feeling of satiation to eliminate some normally eaten meals or snacks” (lines 23-27).

Paragraph [0052]:

“… it was possible to determine the satiating effect (i.e. suppression of hunger, or increase in fullness)”.

Paragraph [0070]:

“Furthermore, the sugar polymer, including the hydrogenated polymer, either alone or in combination, act with xylitol or other sugar alcohol in synergism to control the appetite of the animal and/or provide fullness”.

Thus the patent itself discloses that either an effect on satiation or an effect on satiety or both is to be considered as being an effect on appetite suppression.

Interpretation of the term in the light of the common general knowledge

of the person skilled in the art at the priority date of the patent in suit

[3.3.1] The [patent proprietor] did not dispute that the patent in suit allowed the term “appetite suppression” to be broadly interpreted. Rather, it argued that it was in the “mental furniture” of the average skilled person that when using the term “appetite suppression” he understood that both satiety and satiation must be affected. In other words, despite the broad meaning given to the term “appetite suppression” in the patent in suit, the skilled person would nevertheless give it a narrow interpretation.

Thus the interpretation of the term “appetite suppression” boils down to the question of what interpretation the average skilled person in the art would have given to this term at the priority date of the patent in suit, which is incontestably 9 April 2001. Regarding the average skilled person in the art, the board concurs with the [patent proprietor] that he should be the practitioner in the field of nutrition of mammals, in particular humans. Regarding the question as to whether Prof. Blundell should be considered as the average skilled person in the art, the board considers that Prof. Blundell is an eminent specialist with an extraordinary technical knowledge in this field and cannot represent the average skilled person. According to his curriculum vitae […] he has spent many years working in the field of nutrition and has extensively studied the effects of various foodstuffs on human appetite. Thus the statements in his affidavit (E63):

“19. It is my opinion that it is not satisfactory to assume that because a particular food has an effect on satiety it necessarily also has an effect on satiation. As a consequence and in the absence of an inevitable link between the two both must be independently affected in order to exert an effect on appetite control.”

“21. In summary, it is my opinion that the understanding of a claim about appetite suppression requires an affect on both the satiety and satiation of a subject.”

cannot be considered to represent the general technical knowledge of the average practitioner at the priority date of the patent in suit. Furthermore, E63 expresses a personal opinion on the date of 19 May 2011, i.e. ten years after the priority date of the patent in suit.

[3.3.2] Thus the board agrees with the [opponents] that the skilled person trying to assign a meaning to the term “appetite suppression” would start from the natural meaning to the term “appetite”, which is to be found in E61 (a dictionary). According to E61 the term “appetite” as used in everyday language expresses “the desire or wish for food”. Naturally “appetite suppression” can only mean suppression of this desire, whatever the mechanism involved is, irrespective of the extent and duration of appetite suppression. This is the literal and clear meaning of the claims for the skilled person and there is no reason to deviate from this definition, in particular as the patent specification does not attribute a different meaning to the term “appetite”.

On this basis the term “appetite suppression” would be understood by the skilled person as “the suppression of the desire or wish for food”, regardless how this effect is achieved, be it by acting on satiation or satiety or even on both.

It has not been disputed that two different mechanisms were known at the priority date of the patent which influence the appetite of a subject, namely satiation and satiety which, whilst closely related, can operate independently of each other […].

Nevertheless, an appetite suppressing effect of a compound could be evaluated by measuring of either its satiation effect or its satiety effect, with the combination of both satiation and satiety being the most effective alternative. Indeed the prior art uses interchangeably a plethora of different terms to designate the same concept: reduction of satiation, satiety, food intake suppression, satiating effect, satiation, energy intake suppression, and appetite suppression. The interchangeable use of “satiety” and “satiation” indicates that the interpretation of the term “appetite suppression” as only a combination of both satiation and satiety, as alleged by the [patent proprietor], was not well established in the state of the art at the priority date of the patent in suit. For illustration, reference is made to the following documents:

• E1 […] discloses the use of carbohydrates for suppressing appetite, whereas only the low decrease of the insulin peak was monitored, thus revealing an effect on satiety (i.e. less hunger between meals and less snacking);
• E2 discloses a method to retard the food’s digestion resulting in glucose being released into the bloodstream at a slower rate over a long period of time […] providing a feeling of prolonged satiety and helping to prevent snacking between meals […] and finally leading to the suppression of appetite […].
• E32 […] discloses real appetite-suppressant compositions and recites under the title “Satiety” that “Perception of satiety (hunger, satiety, fullness, desire to eat, appetite estimation of how much one could eat, and thirst) was scored on anchored 100 mm visual analogue scales at day 4 during baseline and day 11 during each intervention period. … To characterize the development of satiation during a meal, questions on hunger, satiety and pleasantness of taste were answered on 100 mm visual analogue scales every 2 min during dinner consumed on the same day.” (emphasis added);
• E35 (column 1, lines 58-62) mentions that “… the [xanthan] gum per se taken well before meals and without food will act to suppress the appetite, perhaps through a bulking phenomenon which possibly causes a signal of satiety, diminishing the desire for further food intake.” (emphasis added);
• E64 discloses that Quorn® (a high protein, dietary fibre combination) has an appetite suppressing effect by having a strong impact on late satiety […].
• E65 […] discloses that the modulation of appetite involves quite a variety of alternative possibilities (enhancing satiety and or inhibiting hunger or altering food selection) which do not have to be present in a cumulative way.

[3.3.3] Certainly, the state of the art at the priority date of the patent in suit discloses also the cumulative effect of satiation and satiety for the control of appetite. Reference is made to E63-Exh5 […], and the affidavit of Prof. Blundell […] confirms this fact. Nevertheless, the cumulative effect concerns the “optimum situation” for the suppression of appetite. The patent in suit […] incidentally defines the “effective” appetite suppression as a 20 to 30% reduction of food intake, although the highest exemplified reduction in food intake is only 16.8% […]. The fact that there is an optimum situation does not cast doubt on the fact that the state of the art cited above discloses also a less ideal suppression of appetite by affecting either satiation or satiety. The technical evidence of the patent in suit discloses […] values for food intake reduction such as 7.2%, 9.9%, 16.8% and 10.9%, which are much lower than the effectively reduced appetite suppression of 20-30% […].

[3.4] The board thus concurs with the [opponents] that the [patent proprietor’s] narrow interpretation of the term “appetite suppression” to require both satiety and satiation is an assertion made “a posteriori”, that is, in view of the [opponents’] various objections during the opposition and appeal proceedings before the EPO. The [patent proprietor] cannot be permitted to fill in the blanks after the priority date and provide now, when the granted patent is challenged, a new and completely unsupported interpretation of the patent language and maintain that this narrow interpretation is the only interpretation that the person skilled in the art would contemplate upon reading the patent.

[3.5] In summary, the contested term has to be interpreted as deriving from the control of satiation or satiety or both.

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T 521/10 – A Problematic Incorporation

A reminder on the conditions for incorporation by reference …

[3] Claim 1 was amended and is now directed to the embodiment disclosed on page 27, line 16 onwards of the published application, i.e. the A1 publication. This is the case for all requests. The enabling disclosure for this embodiment, in particular for the first part of feature b) and feature c) of claim 1, relies on the content of patent applications WO 00/46680 ([INC1]), US 09/378184 (INC2) and US 09/378220 (INC3) incorporated by reference. There is no explicit disclosure of how exactly a pixel array is mapped to a geometric surface and how an image is generated of the program and a video clip by binding the mapped pixel array to the geometric surface.

[3.1] The reference to [INC1] was not present in the priority document of the present application. The board notes that [INC1] was only filed on 2 February 2000, which is later than the claimed priority date of 16 January 2000 for the present application. As far as the subject-matter of claim 1 is based on the disclosure of [INC1], the priority is not validly claimed and the effective filing date of claim 1 is consequently 12 January 2001. Since [INC1] was published on 10 August 2000 it is pertinent prior art against the present application for subject-matter having the filing date as its effective date which is the case for claim 1.

[3.2] Incorporated applications [INC2] and [INC3] do not fulfil the requirements set out in T 737/90 [3] and Case Law, 7th ed. 2013, II. C. 3.2, pp. 307 and 308 (see also Singer/Stauder, The EPC, Commentary, 3rd edition, A 83, No. 34). In order to be validly incorporated according to this case law each document must fulfil the following:

(i) a copy of the document was available to the Office on or before the date of filing of the application; and

(ii) the document was made available to the public no later than on the date of publication of the application under A 93.

Neither of the two documents was available to the public on the date of filing of the present application.

The only publication available to the EPO originating from [INC2] and [INC3] is […] a continuation-in-part application published on 7 November 2002, i.e. later than the publication date 19 July 2001 of the present application. […]

[3.4] In the annex to the summons to oral proceedings the appellant was invited to provide evidence that the above mentioned requirements were fulfilled for [INC2] and [INC3] […](e.g. by having been publicly accessible in the application dossier before the date of publication of the present application and therefore having been made public by analogy with A 128(4))). However, the appellant did not react to this invitation. No arguments or facts contradicting the board’s reasoning were presented with regard to the aforementioned problems concerning the disclosure and effective filing date. The board takes this as meaning that the appellant accepts the board’s reasoning.

[3.5] For this reason the board concludes that only [INC1] has been validly incorporated by reference and the subject-matter of claim 1 of all requests, for the reasons given above, only has the filing date of the present application as its effective date, with [INC1] being prior art relevant to claim 1.

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T 1020/13 – One For All

This is an examination appeal.

On November 29, 2011, the Examining Division (ED) had issued a communication in which it raised objections under A 84 against the claims filed on June 13, 2011.

In response to this communication the applicant filed a new set of claims on May 19, 2012.

The ED then refused the application and justified this refusal by explaining that claim 1 on file did not comply with the requirements of A 84 (because the claimed tool was defined via an object that was not part of the tool).

The applicant requested a reimbursement of the appeal fee because its right to be heard had been violated.

In the following extract Board 3.2.06 deals with the admissibility of the appeal.

*** Translation of the German original ***

  

[1] The notice of appeal, which was received on April 14, 2013, and which, according to the appellant, contained the whole statement setting out the grounds of appeal, contains a request for reimbursement of the appeal fee based on a violation of the right to be heard (A 113(1)) by the ED. The appellant is of the opinion that its right to be heard had been violated inter alia because it had been refused an opportunity to comment on the arguments of the ED regarding the features that had been added to claim 1 of May 19, 2012, in view of the clarity objection pursuant to A 84, which was decisive for the refusal […].

The reasons invoked by the appellant made directly clear to the Board what [the appellant] believed to be a procedural violation. If, based on these reasons, the violation of the right to be heard invoked [by the appellant] would have to be confirmed, then, as a rule, the Board would have to set aside the decision and remit the case to the first instance, in application of Article 11 RPBA. Thus the appeal is sufficiently substantiated (begründet), at least in respect of this alleged substantial procedural violation. When a substantial procedural violation is invoked in the statement of grounds of appeal and sufficiently substantiated, then it is irrelevant (unerheblich) for the decision on the admissibility of the appeal whether the appeal is also sufficiently substantiated in regard of the main grounds (tragende Gründe) of the decision (in this case, in regard of A 84). As the Board considers all other admissibility requirements to have been complied with, the appeal is admissible.

The Board finally found that the appellant’s right to be heard had not been violated and remitted the case to the ED for further processing on the basis of the third auxiliary request.

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T 109/11 – Speed-Dating Is Dangerous

This decision also contains some interesting paragraphs on how oppositions have to be substantiated, in particular when non-patent documents are cited.

*** Translation of the German original ***

  

[10] According to the established case law of the Boards of appeal, the requirement that [the opponent has] to provide an indication of the relevant facts and evidence (R 55(c) EPC 1973, last half sentence) is only met if the relevant facts and evidence are indicated so that they allow the Opposition Division (OD) and the patent proprietor to correctly understand the grounds for opposition that are invoked and their validity (Stichhaltigkeit) without further investigations, so that they can comment on them (cf. T 2/89 and T 328/87). The requirement “indication of the facts and evidence presented in support of the grounds” has to be understood to mean all facts on which the opponent bases the request to revoke the patent. In other words, the justification (Begründung) of the opposition has to present the circumstances that are relevant for the assessment of the ground for opposition that is invoked. Which circumstances are relevant depends on the individual case and follows from the overall context (cf. T 222/85). It is not possible to remedy deficiencies after the expiration of the time limit for filing an opposition if the justification of the opposition is insufficient (see T 522/94). In order to meet the requirements of R 55(c) EPC 1973, last half sentence, it is sufficient if one ground for opposition is sufficiently substantiated. One single substantiated objection, such as for example the objection of lack of novelty based on one of the documents, is sufficient to reach this goal.

[11] In the present case the opponent has cited the grounds for opposition “lack of novelty” and “lack of inventive step” as well as the ground for opposition pursuant to A 100(c) EPC 1973 in the opposition form, but in the justification only the ground for opposition “lack of inventive step” was explained in more detail: document A1 (JP 58224226 A (Abstract)) was discussed in combination with documents A3 and A5. Point 3.2 of the notice of opposition also cites document A8 (DE 196 01 517 A1), but only in combination with the above mentioned documents, i.e. in connection with A1 and A3 and A1 and A5, respectively. Thus the indication of the facts and evidence presented in support of this ground within the meaning of R 55(c) EPC 1973 is limited to the objection of lack of inventive step.  The opposition form does not contain any explanations regarding the grounds for opposition “lack of novelty” and A 100(c) EPC 1973. However, this does not have any influence on the admissibility of the opposition, because the notion of inadmissibility pursuant to R 56 EPC 1973 only refers to the opposition as a whole. If the requirements regarding admissibility are met for at least one ground for opposition, the opposition is admissible as a whole (see T 212/97).

[12] The explanations of the [opponent] regarding substantiation essentially consists in the following chain of arguments:

(a) R 55 EPC 1973 does not provide that documents cited against [the opposed patent] have to be dated or that their date (Zeitrang) has to be indicated;

(b) even if there was a requirement regarding [their] date, the dates provided on the opposition form met this requirement;

(c) the above mentioned dates are to be understood as print dates – regarding these dates one had to assume a prior publication (Vorveröffentlichung) of documents A3 and A5;

(d) the question of whether there had indeed been a prior publication was only to be examined when the allowability of the opposition was examined.

[13] As far as the first objection is concerned, it has to be noted that the facts and evidence presented in support of the ground for opposition within the meaning of R 55(c) EPC 1973 have to be provided for each ground for opposition. The ground for opposition “inventive step” in any case requires the indication of the relevant prior art on which the assessment of the inventive step is to be based in the opposition proceedings. In the present case the ground for opposition “inventive step” is based on a combination of documents A1 and A3, A1 and A5 as well as document A8 which is cited in the context of combinations of A1 and A3 and A1 and A5, respectively.

As a rule there is no need for explanations regarding the fact that patent documents have been published at a certain date, i.e. have to be considered as prior art, because the documents themselves provide a reliable (gesichert) publication date. In the present case, this applies to documents A1 and A8 because they are classical patent documents. However, if documents that do not disclose a reliable publication date are cited, it is necessary to discuss in detail the question of whether they belong to the prior art, i.e. the question of the date and circumstances of their publication, which is fundamental for the ground for opposition “inventive step”. In the present case, the documents A3 and A5 are not patent documents which themselves provide a reliable publication date, but assembly instructions (A3) and a company brochure (A5). As a rule, such documents do not contain a date of publication but at best an encoded print date or a date related to the prior art taken into account in the document, or the editorial deadline (Redaktionsschluss). In such documents, which are not classical patent publications, the requirement of substantiation is, as a rule, only met if [the opponent] cites concrete facts from which one can derive that they have been made available to the public before the priority date (cf. Podbielski, in: Singer/Stauder, EPÜ, 6^th edition, A 99, marginal number 87, which cites further authorities). Thus the presentation of the facts has to be such that it can be understood without further ado when and under which circumstances the alleged prior publication has occurred.

Therefore, the first objection of the [opponent] cannot succeed.

[14] Regarding the second objection of the [opponent], the following should be noted: In the case under consideration the documents A3 and A5 have been designated as “Company brochure assembly instructions CERAPUR (Ju 1336/1) February 1996” (A3) and “Company brochure Vaillant Thermoblock Klassik Heating Value VC/VCW 196 E-C, August 1998” (A5).

There were no further explanations regarding the above mentioned dates and the circumstances of a possible prior publication within the time limit for filing an opposition. Thus the question arises whether the [opponent] has met its duty of substantiation as to when and how the cited documents A3 and A5 have been made available to the public. In this context it has to be noted that the [opponent] has dated these documents in the opposition form, i.e. “February 1996” for A3 and “August 1998” for A5 – but that it has not pointed out whether these dates were to be understood as print or publication dates. Moreover, it is to be noted that there are no explanations in the notice of opposition as to whether these dates were taken from the documents themselves or from which pieces of information, possibly contained in the documents, they were derived. The Board is of the opinion that the dates are not disclosed in the documents themselves. As explained in the decision of the OD, document A3 contains several combinations of letters and numbers that can be interpreted as indications of date. First, on the right upper corner of the cover sheet there is the indication:

Moreover, on the right upper corner of the cover sheet there is the indication:

And on the last page (page 34) in the middle of the right margin there is the indication “11/95”:

The notice of opposition only contains the date “February 1996” without any further discussion of or reference to the information contained in A3. It is only in its letter dated September 30, 2005, i.e. after expiration of the time limit for filing an opposition, that the opponent has explained that the indication “JU 1336/1, 6 720 603 928 (2.96) PC - Pf” referred to the print date. For the sake of completeness, it also has to be mentioned that in the course of the oral proceedings on May 17, 2013, the [opponent] has explained, in view of the indication on the cover sheet (“29.09.95”) that this was the date of clearance (Freigabe). The fact that a document that was allegedly printed in the year 1996 contains a clearance date of 1995 remains unexplained. In any case, it cannot be the clearance of the present document A3, which was said to have been printed in 1996.

[15] As far as A5 is concerned, it has to be noted that this document also contains several combinations of figures and letters that can be interpreted as indications of date. First, the upper right corner of the cover sheet and the bottom of the right margin of the last page both contain the indication

And the bottom of the right margin of the last page contains the indication “subject to change A/0898 87 6108”:

In its letter dated September 30, 2005, i.e. after expiration after the time limit for filing an opposition, the opponent has explained that the latter indication allowed to derive a print date of “August 1998”.

[16] In view of what has been said above, the Board of appeal (BoA) reaches the conclusion that because of the ambiguity of the letter-number combinations in documents A3 and A5 the dates provided in the opposition form cannot be unambiguously derived from the documents themselves. Moreover, even when taking account of the contents of documents A3 and A5 it was not apparent whether the opponent wanted these dates to be understood as print or publication dates. For this reason alone it would have been necessary to discuss in more detail the question of the dates of the above mentioned documents within the time limit for filing an opposition. Moreover, it should be noted that – even if the later submissions of the [opponent] are considered – the dates contained in the opposition form are only print dates. Thus, even the submissions of the [opponent] lead to the conclusion that the question of the date, which is relevant for the requirement of substantiation, and of the circumstances of the alleged prior publications has not been discussed (thematisiert) at all within the time limit for filing an opposition. Thus the BoA is of the opinion that for the above mentioned reasons alone there is a lack of substantiation resulting in the inadmissibility of the opposition.

[17] For the sake of completeness, however, the [Board] wishes to make the following comment on the third objection of the [opponent] (see point [12] above). The [opponent] is of the opinion that the dates mentioned in the notice of opposition are to be understood as print dates, and consequently one has to assume a prior publication of documents A3 and A5, and the opposition is sufficiently substantiated. First it has to be noted that, as mentioned above, the BoA does not endorse this approach, be it only because the dates provided in the opposition form were not unambiguously to be understood as print dates. But even if one assumes that the indication “JU 1336/1, 6 720 603 928 (2.96) PC - Pf” refers to the date on which A3 was printed – as alleged by the [opponent] – this does not say anything about the date of publication, which is decisive for the determination of the prior art. The BoA is of the opinion that in this context it also has to be taken into account that document A3 provides assembly instructions. Usually assembly and installation instructions are not properly “published” but are made available to the public together with the product that is to be assembled or installed (cf. T 511/02). The corresponding information cannot be deduced from A3 itself, nor does the notice of opposition provide any indication on possible sales of the product or a distribution of the assembly instructions related to such sales.

[18] As regards A5, it has to be noted that it apparently is a company brochure of the [opponent]. It is true indeed that, as a rule, a brochure that is directed at clients may be assumed to be distributed to potential customers shortly after the print date, so that the indication of the print date may be sufficient under certain circumstances (see T 597/07 and T 782/04). However, in the present case the BoA is of the opinion that it is necessary to take account of the fact that the opposition form only contains the indication “August 1998” without any further explanation whether the opponent  understands this date to be a date of print, of publication or an editorial deadline. Moreover, there is no indication as to whether this date was derived from information contained in the document itself. This, however, appears to be required in the present case because, as mentioned above, A5 contains several letter-number combinations which might serve as a basis for dating the document. However, even if the indication “subject to change A/0898 87 6108” on the last page of A5 is used and interpreted as a date, this date cannot be readily understood to be a print date. Rather, the indication “subject to change” suggests that this was intended to establish the editorial deadline or the prior art taken into account in the brochure. The Board is of the opinion that in the present case it also has to be taken into account that the patent under consideration claims a priority date of March 14, 1999, i.e. a date which is only about 8 to 9 months after the above mentioned date (“August 1998”). If one assumes that “August 1998” designates the prior art taken into account in the brochure or the editorial deadline, then one may not simply assume that [the document] has been published before the priority date because usually there is quite some time between the editorial deadline and the printing (Drucklegung) and a subsequent publication, which itself may be quite some time before the distribution of the brochures, irrespective of the configurations mentioned by the OD, where the distribution of printed brochures does not take place at all, for technical or economic reasons (deficiency of the product, lack of compliance with technical standards, infringements, etc.). In this context the [patent proprietor] has pointed out that it is not unusual that printed brochures are not published in cases where the technology develops quickly or where there is a deficiency of the product which leads to the production of distribution of the products being stopped.

[19] The date and the circumstances of the publication are decisive for the assessment of whether the documents A3 and A5 belong to the prior art and, therefore, whether they can be cited against the patent at all. Thus a presentation of the corresponding facts would have been necessary for the justification of the ground for opposition “inventive step” in the present case. For the above mentioned reasons the BoA is of the opinion that the indications of dates contained in the opposition form, which have not been explained at all, do not comply with the requirement of substantiation expressed in R 55(c) EPC 1973, all the more so as the documents do not provide any indications helping to understand the dates given in the opposition form.

[20] In the statement of grounds of appeal the [opponent] also pointed out that it was not relevant for the admissibility whether the indications regarding the publication of the documents were proven; [the opponent expressed the opinion] that this was related to the allowability of the opposition but not to be dealt with when its admissibility was examined.

[21] In this context it has to be emphasized that it is necessary to distinguish between the requirement of substantiation and the question of whether an assertion regarding facts (Tatsachenvortrag) is considered to have been proven. When substantiation is to be examined, all that has to be examined is whether the relevant facts and evidence are indicated so that they allow the Opposition Division (OD) and the patent proprietor to correctly understand the grounds for opposition that are invoked and their validity (Stichhaltigkeit) without further investigations and whether they are enabled to comment on them (cf. T 2/89 and T 328/87 . The BoA has carried out the examination accordingly; it had to examine whether the factual assertion regarding the date and the circumstances of the publication of A3 and A5 was sufficient. There was a need for such an assertion because the documents cited are not patent documents which themselves provide a reliable publication date. The mere indication of dates without any further explanation of whether these date are publication dates at all and without any explanation regarding the basis for the dating cannot constitute a sufficient assertion of facts, all the more as the documents do not unambiguously disclose these dates. Moreover, it has to be taken into account that dates that may be contained in such documents usually refer to an editorial deadline or a print date but not the date of publication. Therefore, in view of the nature of the documents, the dates provided on the opposition form needed further explanation, which means that the factual assertions did not comply with the requirement of substantiation in this respect. Thus, what matters is not whether the dates provided were to be considered to have been proven, but only whether the submissions were sufficiently substantiated regarding the date and the circumstances of the publication of documents A3 and A5.

[22] As the requirement of substantiation has to be met within the time limit for filing an opposition and any deficiency of justification cannot be remedied after expiration of this time limit (see above, point [10]), neither the submissions of the [opponent] dated September 30, 2005, which contain further explanations regarding the publication of documents A3 and A5, nor the declaration in lieu of oath of Dr. Hocker, which has been filed during the oral proceedings before the OD, on November 15, 2010, can be taken into account when the substantiation [of the grounds for opposition] is examined. Also, the argument presented in the statement of grounds of appeal, according to which the documents A3 and A5 had only been filed in order to provide evidence for the general knowledge of the skilled person and accordingly, the attacks contained in the opposition are based on A1 in combination with the general knowledge of the skilled person, is not persuasive. When discussing the ground of inventive step, the notice of opposition expressly indicates that the skilled person, based on document A1, would consider the teaching contained in documents A3 and A5 in order to reach the subject-matter of claim 1 of the patent-in-suit […]. Thus the BoA cannot endorse the argument of the [opponent] according to which the documents A3 and A5 have only been introduced as evidence for the common technical knowledge.  

[23] As already explained by the OD in […] its decision, the objections against inventive step which have been raised in the notice of opposition expressly rely on a combination of A1 and A3 or A5, respectively. Even if it was possible to object [to inventive step] based on document A1 in combination with the general knowledge of the skilled person, as first argued by the [opponent] during the oral proceedings before the OD […] and repeated in the statement of grounds of appeal, this does not mean that such an objection, which has only been raised after expiration of the time limit for filing an opposition can remedy the original lack of substantiation of the opposition. As mentioned above, the requirement of substantiation has to be met within the time limit for filing an opposition. Subsequent attempts of remedying deficiencies are not to be taken into account when this question is examined.

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