K’s Law

T 2196/09 – Not In Line

2012-01-28T20:01:00.002+01:00

The applicant filed an appeal after the Examining Division (ED) had refused his application.

The following paragraphs are taken from the Board’s discussion of the admissibility of the main request and of auxiliary request 1:

[4] According to the established case law of the Boards of Appeal, the function of appeal proceedings is to give a decision upon the correctness of a separate earlier decision taken by a department of first instance (cf. “Case Law of the Boards of Appeal of the EPO”, 6th edition 2010, VII.E.1). In line therewith, Article 12(4) RPBA states that it is within the power of the board to hold inadmissible facts, evidence or requests which could have been admitted in the first instance. Although new requests with amended claims may exceptionally be admitted in appeal proceedings, it is not the purpose of the appeal to give the appellant the opportunity to recast its claims as it sees fit and to have all its requests admitted into these proceedings (cf. “Case Law”, VII.E.16.1.2).

[5] As for the main request and auxiliary request 1, the board has the following considerations:

[5.1] The main request dealt with by the ED in the decision under appeal comprised a technical feature characterizing the distal optical tip (“... comprising a tapered portion (305) and a tapered distal tip portion (303) ...”) which was further defined in more detail in auxiliary requests I and II before the ED (“... wherein a substantial step is provided where the tip portion meets the base portion ...”) […]. None of these features are present in the main request and the auxiliary request 1 filed in appeal proceedings […]. The deletion of these features in appeal proceedings does not address, let alone overcome, the objections raised by the ED and reverts the claimed subject-matter to that examined at a much earlier stage of the examination proceedings. Indeed, the claims of the main […], closer to those originally filed than those underlying the decision under appeal.

[5.2] According to the “Minutes of the OPs before the ED”, auxiliary request II was filed at the oral proceedings (OPs) before the ED after the applicant requested, and was granted, a short break. After examining this auxiliary request II and considering it not to meet the requirements of A 123(2), the applicant was asked whether it had further requests, to which it replied that it did not wish to introduce a new request […]. Thus, supplementary time was offered by the ED and not availed by the applicant because it did not consider necessary or, as stated in the Minutes, it did not wish to file further requests. Indeed, in the light of the nature and type of amendments introduced into the main request and the auxiliary request 1 in appeal proceedings, the board considers that it was not a lack of opportunity or of time for the applicant to file such requests at the OPs before the ED but that it had good reasons not to file them at that stage of the examination proceedings since they would certainly not have been admitted into the proceedings by the ED.

[5.3] Thus, neither the main request nor the auxiliary request 1 are in line with the purpose of appeal proceedings as established in the case law. Therefore, in accordance with Article 12(4) RPBA, the board, exercising its discretion, decides not to admit these requests into the appeal proceedings.

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

The file wrapper can be found here.

NB: A French summary (and some interesting reader comments) can be found on Laurent’s blog (here).

T 1336/09 – Anonymous Is Alright ...

2012-01-27T02:01:00.003+01:00

... at least in ex parte proceedings. In a recent post I have reported T 146/07 where the Board deemed anonymous third party observations not to have been filed. The present decision – taken one day after T 146/07 – comes to a different conclusion.

[2.1] The third party observations […] were filed four working days only before the scheduled oral proceedings (OPs), citing two new documents which were obviously highly relevant against several of the requests then on file.

The appellant though having been informed of the filing of the observations in advance of the OPs neither requested that these be excluded from the procedure, nor that the OPs be postponed. At the start of the OPs, it filed an amended request in which due account had been taken of the new citations.

In these circumstances the board considered that the lateness of the observations should not per se be a bar to their admission into the procedure.

[2.2] In respect of the anonymous character of the observations under A 115, the Board notes that a Decision of the President of the EPO and a Notice from the EPO, both dated 10 May 2011 and concerning the filing of third party observations under A 115 by means of an online form made available on the website of the EPO, have been published in OJ EP0 2011, pages 418 and 420 respectively. The Decision in particular allows for third party observations being filed without signature (see Article 2 of the Decision), the Notice states that “Observations may be filed anonymously”(see the 4th paragraph under point "Formal requirements") .

Indeed, the boards of appeal of the EPO are bound only by the EPC, but the above dispositions in relation to anonymous third party observations are in line with earlier decisions of the boards, which did admit such observations both in ex-parte and in inter partes appeal proceedings, without apparent misgivings in relation to their anonymous character (see T 258/05 [V,3.3] in combination T 735/04 [2]).

Since the observations in the present case have been made under A 115 in an ex parte appeal before a technical board of appeal and are limited to the citation of pieces of prior art and the indication of the correspondences between their content and certain claimed features, which essentially are statements of facts, the present situation is also quite different from that in the decisions G 1/03 and G 2/03 in which the Enlarged Board of Appeal without further explanations did not take into account an anonymously filed statement made within the frame of the referral of a point of law in relation to the allowability of disclaimers.

The only requirements imposed on third party observations by R 114(1) are that they be filed in writing in an official language of the EPO and state the grounds on which they are based. The written form of the observation and the use of an official language indeed constitute the minimal conditions for allowing them to be communicated to the applicant or proprietor and to be commented upon by the latter, as provided for in R 114(2).

R 50(3) and by analogy R 86, which establish the requirement that documents filed in the examining or opposition procedure be signed, do not in the board’s opinion directly apply to third party observations. As a matter of fact, the reference in R 50(3), in relation to the case of a missing signature, to “the party concerned” indicates that the rule addresses the filing of documents by parties to the procedure, which a person who files third party observations clearly is not, as is expressly stated in A 115 (see the last sentence).

The board is aware of decision T 146/07 [3-6], dated the day before the date of the present decision and made public later, in which the deciding board disregarded third party observations because of their anonymous character, on the basis inter alia of a different appreciation of the relevance to this issue of R 50(3) and of decisions G 1/03 and G 2/03.

Contrary to the present instance, decision T 146/07 concerned an inter partes appeal, and it emphasised that “Identification is particularly important in the context of opposition proceedings in order to allow the competent organ of the EPO to verify whether the observations are indeed filed by a third party rather than by a party to the proceedings. Otherwise, a party might be tempted to submit late observations and/or documents by means of anonymous third party observations in order to avoid negative procedural consequences such as apportionment of costs.”

In ex parte proceedings however the appellant is the sole party and it can at any time raise new issues or submit new prior art - and so can the board of its own motion by virtue of A 114(1). Accordingly the risk of anonymous third party observations providing a cover for procedural abuse can be largely excluded in ex parte proceedings.

For these reasons the board considered that in the present circumstances the anonymous character of the third party observations did not bar them from being admitted into the procedure.

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

The file wrapper can be found here.

T 2020/07 – Official Selection

2012-01-26T02:01:00.016+01:00

If the provisional results of the second poll are representative, there are quite a few chemists among the readers of this blog. Perhaps some of them might find the following decision interesting.

The patent proprietor filed an appeal against the decision of the Opposition Division revoking the opposed patent.

In what follows, the Board examined the novelty of the main request, claim 1 of which read (in English translation):

1. A process for the preparation of polyisobutenylphenol-containing Mannich adducts by
(a) alkylation of a phenol with polyisobutene having more than 70 mol% of vinylidene double bonds and a number average molecular weight of from 300 to 3000 at below about 50°C in the presence of an alkylation catalyst;
(b) reaction of the reaction product from a) with formaldehyde, an oligomer or a polymer of formaldehyde and at least one amine which has at least one secondary amino function and no primary amino function, or
(c) reaction of the reaction product from a) with at least one adduct of at least one amine which has at least one secondary or primary amino function and formaldehyde, an oligomer of formaldehyde, a polymer of formaldehyde or a formaldehyde equivalent,
wherein, in step (c), an adduct which is obtained from at least one amine and formaldehyde, an oligomer of formaldehyde, a polymer of formaldehyde or a formaldehyde equivalent by reacting the two reactants for at least 15 minutes at above +15°C is used and wherein this adduct is formed in the absence of the polyisobutenylphenol and only subsequently reacted with the polyisobutenylphenol.

*** Translation of the German original ***

[3.1] Document D1, which is to be taken into account as a prior, post-published European patent publication according to A 54(1), A 54(3) and A 89, discloses - in its claim 1 and under the chapter heading “Summary of the invention” on pages 1 and 2 – a composition comprising a Mannich adduct and an alcohol, as well as a process for producing this composition (claim 29). The Mannich adduct is “derived from” or produced from three components referred to as (A), (B), and (C) in the presence of alcohol, where (A) is a hydroxy containing aromatic compound having one to four hydrocarbyl groups of up to about 400 carbon atoms, (B) is an aldehyde or ketone having the formula R1-(CO)-R2 wherein R1 and R2 independently are H or hydrocarbyl groups having from 1 to about 18 carbon atoms and R2 can also contain carbonyl, and (C) is a mixture of water and an amine containing at least one primary or secondary amino group.

The description of D1 first deals with various embodiments of component (A), leading the reader from benzene or naphthalene nuclei […] having hydrocarbyl substituents (“R1”) and hydrocarbyl groups derived from an olefin to polyisobutene groups having a high content of methylvinylidene groups (e.g. based on “Ultravis 10” or “Ultravis 30” […]). “Ultravis 10” was used in part A of the only example of D1.

[…] Finally a polyisobutene-substituted phenol (PIB phenol) is referred to as preferred embodiment of component (A), wherein the polyisobutene substituent is derived from a polyisobutene (PIB) having a number average molecular weight (MN value) from about 300 to about 5000, or from about 500 to about 2500, respectively, and a minimum methylvinylidene isomer content of about 70%, e.g. about 80%.

Process step (a) of claim 1 of the present main request concerns the “alkylation of a phenol with polyisobutene having more than 70 mol% of vinylidene double bonds and a number average molecular weight of from 300 to 3000 …” Therefore, the PIB phenol produced in process step (a) of present claim 1 corresponds to the preferred embodiment of component (A) in D1.

[3.1.2] The description of component (B) in D1 also leads the reader from a general description of suitable substances, a great number of aldehydes and ketones, to a preferred embodiment. Lines 1 and 2 of page 6 refer to paraformaldehyde and “aqueous solutions of formalin (e. g., about 35 % to about 45 % by weight formalin in water) [as] preferred reactants.” In part B of the example of D1 paraformaldehyde was used.

Claim 1 of the present main request refers to the use of formaldehyde, an oligomer or a polymer of formaldehyde for both process variants. In […] the opposed patent, these terms are explained in more detail: they comprise the terms formalin solution, trioxane and paraformaldehyde. In this case also the used compounds are partially identical with those of D1.

[3.1.3] According to claim 1 of D1, a mixture of water and an amine containing at least one primary or secondary amino group is used as component (C). Starting from line 4 of page 6, the amine component is explained in more detail. Accordingly, it typically contains a certain amount of water (“The weight ratio of amine to water is typically about 50:50 to about 99:1”) and, therefore, has two components. The amine contained therein shall contain at least one group referred to as “> NH”. In a list of suitable amines of different structure […], wherein ethylene diamine is referred to as a “preferred amine” […] the last paragraph of page 6 also mentions amines having a secondary and no primary amino group: dimethylamine, N-methyl-ethylamine, N-methyl- octylamine, and dibutylamine.

Those last-mentioned amines in the list of exemplary amines of D1, therefore, fulfil the requirements of amines according to variant (b) of claim 1 of the present main request: at least one secondary amine group but no primary amino function.

[3.1.4] Claim 1 of document D1 only recites the substances that are initially contained in the reaction mixture (i.e. the components (A), (B), and (C) according to their most general definitions) but does not provide any features of the process for producing the Mannich adduct. Process claim 29 only requires component (A) to be reacted with components (B) and (C) in the presence of alcohol. Dependent claim 33 mentions a range from 40 to 200°C as process temperature. Claim 34 concerns a process wherein the polyisobutene substituent is derived from a polyisobutene having a methylvinylidene isomer content of at least about 70%, paraformaldehyde and a mixture of water and ethylene diamine, and which is carried out in the presence of 2-ethyl hexanol. There is only one place in the description of D1 where the process for producing the claimed compound is explained in more detail – in view of the process features defined in the present claims of the opposed patent – than in these process claims: in the only example on pages 11 and 12 of D1.

[3.1.5] There was agreement between the parties that the first process step (a) according to claim 1 of the present main request did not differ from part A of the example of D1, not even in view of the temperatures used. However, the [patent proprietor] had based its argumentation that in part B of the example of D1, which describes the subsequent Mannich reaction of the PIB phenol of part A, 2-ethyl hexanol and water were present, whereas none of these compounds is added according to claim 1 of the main request.

[3.1.6] In view of this argument [the Board] refers to the different embodiments of variant (i) in the examples IIb, IIe and IIf […] of the opposed patent. For instance, in example IIb, as also explained in general terms in paragraph [0068], an alcohol, i.e. isopropanol, is added. On the other hand, in examples IIa and IIe, a 37% strength formalin solution is used, and in example IIf a “37% strength aqueous solution of formaldehyde” is expressly added to the present components PIB phenol and dimethylamine (“40 ml of 40% strength aqueous solution”). There the reaction mixture, therefore, apparently contains the very components that are described in claim 1 of D1. For the sake of completeness, [the Board] notes that in example 3 of the trial report of the patent proprietor dated July 13, 2007, water and formaldehyde were also added.

Moreover, water is formed during the Mannich reaction, as can be seen from part B of the example of D1 and also the last reaction formula on page 261 of D9.

Considering these findings, the argument of the [patent proprietor] concerning the addition of water or alcohol, respectively, in D1, in order to establish differences that are relevant for the decision on novelty, is not persuasive.

[3.2] The example in D1 and the parts of its general disclosure mentioned above show that the use of PIB phenol having a MN value within the range from 300 to 2500 and a methylvinylidene content close to or above 70 % (i.e. within the definition of the opposed patent) and of formaldehyde in various common embodiments (Einsatzformen), i.e. as (polymer) paraformaldehyde or as aqueous formaldehyde solution, respectively, is also generally preferred in D1. Therefore, there is only one significant difference between this preferred embodiment of D1, the example, and the subject-matter of the opposed patent, i.e. the selection of an amine other than ethylenediamine.

[3.2.1] As already mentioned in paragraph [3.1.3] above, at the beginning of the first group of the amines that are expressly listed in D1 […] four secondary amines are listed as examples for “primary or secondary amines” as closest alternatives following methylamine: dimethylamine, N-methyl-ethylamine, N-methyl-octylamine, and dibutylamine.

[3.2.2] The Board is of the opinion that such a replacement of a component (of a primary amine) by a compound that is disclosed as a simple alternative (a secondary amine) wherein all the other preferred components of the disclosure are maintained, cannot lead to the acknowledgement of novelty.

[3.2.3] As neither the general description nor the example of D1 suggests the replacement of the preferred PIB phenol or of the preferred aldehyde, but the amine used in the example of D1 is not the but just one preferred amine, the present situation is quite close to the one of decision T 332/87 [2.2, 2nd §] :

“This means that, when examining novelty, different passages of one document may be combined provided that there are no reasons which would prevent a skilled person from such a combination. In general the technical teaching of examples may be combined with that disclosed elsewhere in the same document, e.g. in the description of a patent document, provided that the example concerned is indeed representative for the general technical teaching disclosed in the respective document.”

The finding of paragraph [3.2.2] above is supported even more strongly by decision T 278/97 [1.1.4.2-3] where a disclaimer that had been introduced in claim 1 of the patent under consideration, which excluded a certain support material (cellulose triacetate) was considered to be insufficient for distinguishing [the claimed subject-matter] over a patent application to be considered under A 54(3) and, therefore, for establishing novelty. The prior application (document D4) contained an example 4, wherein cellulose triacetate was used as support material. This example destroyed the novelty of claim 1 under consideration. In the general description there was an explicit list of possible carriers, and this list also mentioned cellulose triacetate. The Board explained that the document did not give any reasons hindering the skilled person from using such a different support. It rather taught that this different support could be used instead of cellulose triacetate.

[3.3] In view of these facts and findings, the Board has arrived at the conclusion that in the present case claim 1 of the main request (and, therefore, the entire main request) cannot be acknowledged to be novel over D1 (A 54(1) and 54(3)).

NB: This decision has more to offer, as we shall see in a forthcoming post.

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

The file wrapper can be found here.

T 110/07 – One Way Only

2012-01-25T02:01:00.025+01:00

Back to basics!

One of the opponents filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form.

The Board did not agree with the way in which the OD had validated the priority claim:

[2.1] The patent in suit claims the priority dates of 14 March 1997 (P1) and of 23 July 1997 (P2). The earlier priority document P1 discloses, as a thickness for the sodium ion diffusion barrier layer (SIDB), the ranges of 2 to 50 nm […] and 2 to 18 nm […]. Furthermore, P1 discloses in the examples individual values of SnO2 CVD-deposited SIDB layer thickness of 101 nm, about 100 nm, 434 nm […], and of 50 nm for SnO2 layers obtained by spray pyrolysis […]. Thus, P1 fails to disclose the range in the claim feature “sodium diffusion barrier layer … having a thickness of at least 10 nm” […]. This was not disputed by the respondent. The question is therefore whether a PASC layer thickness of “at least 10 nm” may be derived from P1.

[2.2] Opinion G 2/98 [ 8.4] – to which the OD referred in the contested decision […] – states that

“[t]he requirement for claiming priority of “the same invention”, referred to in A 87(1), means that priority of a previous application in respect of a claim in a European patent application in accordance with A 88 is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole.”

For the board, neither the claimed lower limit of 10 nm nor the open-ended range of ≥ 10 nm is directly and unambiguously derivable from P1, so that the earlier priority date is not valid.

[2.3] The OD came to a different conclusion, upon applying a “novelty test” based on the concept of overlapping ranges. The board considers the application of this “novelty test” as inappropriate in view of G 2/98 itself, because in the present case there is no overlap, but rather a generalization of ranges. It is true that G 2/98 [8.4] states that “priority claims should not be acknowledged if the selection inventions in question are considered “novel” according to these criteria” (i.e. the criteria applied by the EPO with a view to assessing novelty of selection inventions over the prior art). However, it does not automatically follow from the said statement that priority claims should be acknowledged if the selection inventions in question are considered not “novel”. (In this context, attention is drawn to decisions T 1233/05 [4.4], T 230/07 ([headnote, 4.1.6] and T 1130/09 [3.2] according to which the demonstration of a technical effect over a sub-range is not decisive for acknowledging novelty. A sub-range must be novel per se.)

[2.4] The feature in question relating to the thickness of the SIDB layer is however literally disclosed in P2 […] so that the patent enjoys priority rights of 23 July 1997.

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

The file wrapper can be found here.

NB: This appeal was won by fellow blogger Laurent Teyssèdre. Congrats!

T 1488/08 – Salami Cut-Off

2012-01-24T02:01:00.002+01:00

The opponents filed an appeal against the decision of the Opposition Division (OD) to reject the opposition.

In their written statement setting out the grounds of appeal, the opponents only invoked lack of inventive step under A 100(a). The grounds of lack of novelty and of added subject-matter, which were not substantiated in the statement setting out the grounds of appeal (filed on October 6, 2008), were invoked for the first time with letter of 11 August 2009.

The Board did not admit these grounds:

[2.1] Article 12(2) RPBA stipulates that

“The statement of grounds of appeal and the reply shall contain a party’s complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on”.

This provision provides a cut-off point after which any further submission is ipso facto late and subjected to the discretionary power of the Board. The intended overall effect of this Article is to require the parties to present a complete case at the outset of the proceedings in order to provide the Board with an appeal file containing comprehensive submissions from each party and to prevent procedural tactical abuses.

In the particular circumstance of the present case, the statement of grounds of appeal, after a short introductory paragraph generally referring to earlier submissions made in the first-instance proceedings, contained under the main heading III “Stellungnahme zu der Entscheidung bezüglich der Einspruchsabteilung” only a substantiation in support of lack of inventive step. Specific objections under the grounds of added subject-matter and lack of novelty were not raised.

It is only with the letter dated 11 August 2009 after the reply of the [patent proprietor] that the [opponents], referring to the introductory paragraph of the grounds of appeal, invoked the grounds of extension of subject-matter and lack of novelty.

It is established case law that a statement of grounds which merely generally refers to previous first-instance submissions cannot replace an explicit account of the legal and factual reasons. On the sole basis of the statement of grounds of appeal, the Board had no reason to examine the grounds of inadmissible extension of subject-matter and lack of novelty without making investigations of its own.

The new objections are therefore late-filed and their admissibility is a matter of discretion by the Board pursuant to Article 13(1) RPBA.

[2.2] Article 13(1) RPBA states that

“Any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the Board’s discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy”.

In the present case, the [opponents] have not submitted any objective reasons justifying the filing of the grounds of added subject-matter and lack of novelty at a later stage than with the appeal (such as e.g. in direct response to new points raised by the [patent proprietors] in their reply). The attempt of the [opponents] to re-introduce these grounds thus may only be regarded as a change of position determined by procedural tactics (so-called “salami” tactics). Already on this basis, the Board considered, in view of procedural economy, that it should exercise its discretion not to admit the later-filed grounds of added subject-matter and lack of novelty.

For the sake of completeness, the Board also considered whether these late-filed grounds would constitute, on a prima facie basis, a valid challenge to the patentability of the claimed subject-matter, and came to the conclusion that this was not the case. The objection of added subject-matter addressed in the letter dated 11 August 2009 was concerned with the feature of claim 1 “when the seat back is moved to the reclined position, a top edge of the seat back is caused to be moved in a rearward direction” […]. The submission of the [opponents] in this respect focussed on the OD’s assertion in the decision under appeal , according to which the application as originally filed discloses that “the backseat [i.e. seat back] describes the trajectory of an arch”. However, claim 1 is not concerned with the trajectory of the seat back and therefore the [opponents’] objection appears to be misconceived.

This also applies to the further objection under A 100(c) EPC 1973 raised with the letter dated 11 August 2009, which objection was not raised during opposition proceedings, contesting the change of the claimed subject-matter from “a privacy and support apparatus” to “an airplane”. Indeed an airplane is undoubtedly disclosed in the application as filed. As regards the objection of lack of novelty over D2, it was based on an interpretation of claim 1 justified by the alleged added subject-matter (i.e. due to the added subject-matter, claim 1 would cover objects which were not disclosed in the application as filed, and such objects were known from D2). The objection of added subject-matter being unfounded, on a prima facie basis, the same applies to the objection of lack of novelty.

The Board therefore exercised its discretion not to admit the late filed grounds of added subject-matter and lack of novelty for reasons of procedural economy.

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

The file wrapper can be found here.

T 689/11 – Overstretched

2012-01-23T02:01:00.004+01:00

This decision deals with the refusal of an application claiming an interface between a packaging machine and a data storage storing a plurality of packaging specifications, for selecting at least one of them.

According to the Examining Division (ED), the claimed interface aimed at implementing a business scheme and amounted to no more than a notorious general purpose networked computer system linked to a generic packaging machine as a commonplace peripheral thereof. The description did not mention any technical detail but dealt with a scheme for doing business. Therefore, no prior art search had been carried out at any stage of the application.

Here is what the Board had to say:

Additional search

[2.1] The application was refused for lack of inventive step without a search having been performed. As set out in decision T 1242/04, an ED may raise an objection of lack of inventive step without documented prior art. That should be allowable where the objection is based on “notorious knowledge” or indisputable common general knowledge. Such cases, however are exceptional, and a search is otherwise essential.

[2.2] The Board concurs with the ED in considering a networked general-purpose computer as part of notorious knowledge. However, the Board judges that the ED overstretched the concept of a notorious networked general-purpose computer by alleging that a packaging machine constituted a commonplace peripheral of such a computer so that the notoriety of the computer system propagated to the packaging machine. Even though the application refers to packaging machines only in a generic way, the Board does not regard packaging machines as notorious components. A packaging machine is a technical device which is not a usual computer peripheral, such as a printer, keyboard, data storage, display, I/O modem or the like.

[2.3] An ED should not normally refuse an application for lack of inventive step if the invention as claimed contains at least one technical feature which is not notorious (T 690/06). Therefore, it would have been necessary for the ED in this case to carry out a search into the documented prior art pertaining to packaging machines controlled by (networked) computers, and to take the result of that search into account during the examination of the application.

Request for reimbursement of the appeal fee

[3] According to R 103(1)(a), the appeal fee shall be reimbursed where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

Thus, the appeal fee can only be reimbursed if a procedural violation has occurred. An error of judgement on substantive issues by the ED does not constitute a procedural violation (T 690/06 [12]).

[3.1] In the present case, the ED’s reasoning that a generic packaging machine might be considered as a notorious peripheral of a networked general-purpose computer constitutes an error of judgement on a substantive issue rather than an incorrect conduct of the procedure.

Therefore, the ED’s decision not to carry out a search into the prior art of the present application is not considered as a procedural violation.

3.2 Furthermore, and in contradistinction to case T 1287/04 [4.4-5], the reasoning in the refused decision is sufficient, i.e. existent in a form that can be examined by the Board and the appellant. Although prima facie containing no non-technical feature, claim 1 read in the light of the description, i.e. in the light of the objectives and advantages emphasised by the applicant itself […], can be seen to relate to an interface embedded in a commercial context. Therefore, again it was a matter of judgement for the examining division whether or not to base their reasoning on the case law developed for assessing mixtures of technical and non-technical features, e.g. T 641/00, as it is reflected in the Guidelines for Examination.

[3.3] In conclusion, the Board does not identify a substantial procedural violation and, thus, cannot order a reimbursement of the appeal fee.

To download the whole decision, click here.

The file wrapper can be found here.

T 1827/07 – A Late Swiss

2012-01-21T20:01:00.004+01:00

In this case claims 1 to 4 related to hydrophilic sulphonamide derivatives, claim 5 to their use as a medicament, claim 6 to their use for the preparation of a medicament against certain diseases, claim 7 to pharmaceutical compositions containing these compounds, and claims 8 and 9 to processes for making the compounds.

The Board found the claims to involve an inventive step. It then examined the allowability of the use claim 6:

[6] Claim 6 is directed to the “Use of a sulfonamide derivative according to any of claims 1-4 for the preparation of a medicament for the treatment of a neuronal disorder selected from ...”. Thus it is in the form of a “Swiss-type claim”.

The Enlarged Board of Appeal has decided that a claim of this type may no longer be used “Where the subject-matter of a claim is rendered novel only by a new therapeutic use ...” (see G 02/08 [7; headnote 3]).

This decision applies only to patent applications having a filing date or earliest priority date of 29 January 2011 or later (see G 02/08 [7.1.4], in combination with the "Notice from the European Patent Office dated 20 September 2010 concerning the non-acceptance of Swiss-type claims...", OJ EPO 10/2010, 514, point 4).

The present application is not affected by this ruling in G 02/08, as it has a priority date of 27 September 2000.

Hence, Swiss-type claim 6 may remain in the present set of claims.

To download the whole decision, click here.

The file wrapper can be found here.

T 1610/08 – Honeymoon Killers

2012-01-20T02:01:00.004+01:00

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

By communication of 20 June 2011, the Board summoned the parties to oral proceedings (OPs) scheduled for 21 September 2011 and forwarded its provisional opinion to them.

The opponent’s representative requested, by letters dated 28 June 2011 and 18 July 2011, that the OPs be postponed because he had firmly booked a honeymoon holiday that could not be rescheduled due to the wedding. The representative also pointed out that the patent proprietor’s representative supported the request and offered some arguments why he could not be replaced by a colleague:

The Board refused to postpone the OPs, for the following reasons:

[3] The respondent’s request for postponement of the OPs was considered in the light of the Rules of Procedure of the Boards of Appeal (RPBA) and the Notice of the Vice-President of Directorate-General 3 dated 16 July 2007 concerning OPs before the boards of appeal of the EPO (OJ EPO 2007, Special Edition No. 3, 115), referred to as the “Notice” hereinafter.

According to Article 15(2) RPBA, the Board has a discretion to allow exceptionally a change of date for OPs. In exercising its discretion, the Board has to take into account the internal organisational burden of the Board and the guidelines given to the public in the Notice.

The Notice (point 2.1) lists holidays which have been firmly booked before the summons as a potential serious reason for a representative to request a change of date for OPs.

Point 2.1 of the Notice has to be balanced against point 2.3 of the Notice, according to which every request for fixing another date for OPs should contain a statement why another representative within the meaning of A 133(3) or A 134 cannot substitute for the representative prevented from attending the OPs. Point 2.3 of the Notice thus makes it clear that substitution of a representative is a possible alternative to postponement.

The Board is of the opinion that the circumstances indicated by the respondent with respect to point 2.3 are in fact common to all cases in which substitution is involved. When a party is represented it is a normal situation that the party trusts its representative. The same is true for the point that substitution is likely to cause additional costs to the party. The new representative normally has to prepare the case he takes over and normally has to be paid for his work. Also the fact that the experience acquired during the preceding opposition proceedings is unique is the usual situation when a new representative must take over the representation during an appeal in an inter partes case.

If point 2.3 of the Notice was to be interpreted to mean that the reasons mentioned by the respondent would fulfil the criteria for excluding the possibility of a substitution, then the provision could never be applied and would be devoid of any meaning. This cannot reasonably be considered to have been the intention of the drafter.

In the Board’s view, only extraordinary circumstances, i.e. those which are not common to every case of substitution, should be accepted.

In general, a party can trust other representatives. The respondent’s letter of 14 July 2011 shows that this is also the case in the present proceedings. It was not submitted that it was impossible for other representatives to do the necessary preparation. Further, the present case does not imply special technical difficulties which might prevent the substitution of one representative having a background in the field of medical technology by another one of the numerous representatives of similar background from the same association of representatives. Nor have any particular technical, factual or legal circumstances been asserted which might warrant a different finding.

As far as costs are concerned, it is the decision of the representative in charge of the case whether he will pay the substitute himself or charge the costs to his client. In any case, this is not a relevant factor for the proceedings before the EPO because it does not affect the feasibility of the substitution per se. It simply means that additional costs might arise but does not imply that the party or the representative cannot afford these additional costs.

While experience of foregoing opposition proceedings can be useful, it is not necessary in order to represent a party competently before the board of appeal. No reasons have been submitted that make this case different.

The Board has taken into account the fact that the appellant had indicated that it would also be convenient to him for the OPs to be rescheduled (even though he did not file a request in this respect). However, this is only one aspect among others, as indicated above, and cannot not outweigh the constraints of the internal organisational burden for the Board.

For the above reasons, the Board considers that the submitted reasons do not amount to extraordinary circumstances that are not common to all cases of substitution. A party’s general desire to be represented by a specific member of an association of representatives is not considered sufficient ground for changing the date for OPs. Otherwise the provision according to point 2.3 of the Notice would have hardly any significance in practice.

The Board therefore refused the respondent’s request for postponement of the OPs.

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T 1421/08 – Technicality

2012-01-19T02:01:00.007+01:00

The applicant filed an appeal against the decision of the Examining Division (ED) to refuse his application.

The ED had come to the conclusion that the requests lacked an inventive step over the documents

D1, D2 and the Unix utility “cat” as part of the common know ledge in the art.

Claim 1 on file before the Board read:

An apparatus for regenerating runtime objects, the apparatus comprising:
a processor (210); and
a memory (240), coupled to the processor, storing instructions adapted to be executed by the processor to:
retrieve (100) object model data (1500) defining framework-specific relationships between object types of a computer application framework;
access (110) a generic object navigation grammar file;
incorporate (120) the object model data into the generic object navigation grammar file to produce a framework specific object navigation grammar file;
provide the framework specific object navigation grammar file to a parser generator arranged to generate a rule parser (1510);
parse (1610) one or more invalidation rules by utilizing the generated rule parser (1510) to check the one or more invalidation rules for syntactic correctness, the or each invalidation rule identifying relationships between development objects and runtime objects;
generate a respective rule object for the or each syntactically correct invalidation rule;
execute the or each rule object to invalidate one or more run time [sic] objects which are to be regenerated in response to changes made to one or more development objects; and
regenerate the invalidated run time objects.

In what follows, the Board discussed the technicality of the claimed subject-matter:

[4] According to established jurisprudence of the boards of appeal the claims – directed towards apparatus and computer-implemented methods, respectively – define inventions within the meaning of A 52 (see G 3/08 [10.7]). This is not under dispute.

[5] The central point at stake however is which technical effects can be attributed to the claimed matter and which technical contribution the claimed matter makes over the prior art.

[5.1] The primary purpose of the claims according to the main request, witness the preamble and the last feature of both independent claims, is the regeneration of runtime objects in response to changes made to development objects. This is part of what is conventionally called the “build process” of a software application.

[5.2] The feature claiming regeneration of runtime objects determines the nature of the claimed invention and is, therefore, central for the assessment of patentability. The board notes that this feature was not contained in the claims subject to the appealed decision but added to the claims filed with the grounds of appeal.

[5.3] Determining which runtime objects need to be regenerated in an individual case in view of regenerating only those rather than all of them contributes to limiting the resources needed for a particular build. The board con siders this as a technical effect. Therefore, according to established jurisprudence of the boards of appeal, the features contributing to this effect must be taken into account for the assessment of inventive step (see T 641/00 [headnote 1]).

[5.4] According to the claims, the grammar relates to how the syntax of invalidation rules is defined, the parser generator to how the syntactic correctness of the invalidation rules so defined is verified, and the object rules to how the syntactically correct invalidation rules are used so as to identify invalidated runtime objects. These features do not have an immediate impact on the increased efficiency of the build process if and insofar as the invalidation rules and the runtime objects to be regenerated remain unchanged.

[5.5] Further, the board cannot agree with the appellant that “the way in which the invalidation rules are parsed” or “in which the parser is generated” must “take into account the nature of the relationships between the development and runtime objects”, or “the nature” or “the purpose of the invalidation rules” […]. According to conventional understanding in the art, the parsing does not depend on the nature of these relationships but only on the way they are represented within the grammar, for instance in that the form of a grammar has an impact on whether it can be processed by a particular kind of parser or within specific time or space constraints.

[5.6] However the board considers that the utilisation of a grammar, a parser generator and rule objects enables the software developer to exercise control over the build process and over the extent to and the ease with which the relevant effect is actually achieved.

[5.7] The board is of the opinion that within a claimed invention having a primary technical effect, features enabling and supporting control of that effect will typically have technical character as well. In consequence, the board concludes that the fact that a grammar, a parser generator and rule objects are used within the context of regenerating runtime objects contributes to the technical character of independent claims of 1 and 9 of the main request and therefore may also contribute to inventive step.

The case was finally remitted to the ED for further prosecution.

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T 1864/09 – One Or The Other

2012-01-18T02:01:00.004+01:00

This decision also contains an interesting statement on remittals pursuant to A 111(1).

Having found both requests on file to lack inventive step, the Board had to deal with the request to remit the case to the Examining Division (ED) .

*** Translation of the German original ***

[6] The request for remittal pursuant to A 111(1) could not be granted, for the following reasons.

[6.1] This request, which had already been filed during the written proceedings (written submission of July 17, 2009) and in view of which the Board, in the annex to the summons dated January 12, 2010, pointed out that “it will have to be discussed whether the case may have to be remitted to the ED” […] at first was not pursued in the oral proceedings (OPs). A request for remittal was again made at the end of the OPs, at a time when the substantive examination had already been terminated. During this substantive examination, in which [the Board] acted as if it was the ED pursuant to A 111(1), second sentence, first half sentence, the subject-matter of claim 1 according to the main request, which had been amended following its discussion during the OPs, was extensively examined as to its compliance with the requirements of A 56 and A 84 (inventive step and clarity) ; the same holds true for claim 1 according to the auxiliary request.

[6.2] The request for remittal, according to the second way in which a Board of appeal may proceed, which is mentioned in A 111(1), second sentence, second half sentence, therefore, has been made at a time when the examination according to the first option of this article had already been terminated.

[6.3] As a consequence, the request for remittal could not succeed, on procedural grounds alone, because the EPC does not establish the right to have a Board act along both options mentioned in A 111(1) during examination appeal proceedings.

[6.4] Nor could the request succeed on factual grounds. It is true indeed, as argued by the appellant, that the impugned decision has been based on lack of clarity and lack of novelty only and that the amendment of the claims has restored novelty. However, […] in view of the claims to be examined, the factual situation is not completely new with respect to the factual situation underlying the impugned decision.

The same holds true for the prior art to be taken into account for the examination of inventive step. Besides document D1/D2, which has already been taken into account for the examination of novelty in the examining proceedings, only document D4, which had been referred to as closest prior art in the present application and which had the same applicant as the present application, has been taken into account.

Therefore, contrary to the appellant’s opinion, no new aspects which would justify a remittal have arisen during the appeal proceedings.

[6.5] Finally, it has to be noted, for the sake of completeness, that the appellant already had the opportunity to carry out the amendment within the framework of the examination of novelty and clarity before the ED, at least as an auxiliary request, as he has done during the appeal proceedings.

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T 1864/09 – Irrelevant Alternatives

2012-01-17T02:01:00.004+01:00

When trying to establish the existence of an inventive step, attorneys sometimes argue that the skilled person would not have done this or that because there was a well-known path he would rather have chosen when trying to solve the problem under consideration. Depending on the concrete circumstances, there may be some truth to this, but the present decision shows that the argument will not always work.

If you hate mechanics, you better not read on.

The applicant filed an appeal against the decision of the Examining Division to refuse his application.

Claim 1 of the main request before the Board read (in English translation):

Power tool (1) having a drive motor (2) and a flange (3) connected to it so that it can be driven, wherein a disk (5), in particular a grinding disk (Frässcheibe) or a separating disk (Trennscheibe), which can be attached so that it is hindered from rotating (drehfest anbringbar) and to which at least one transmission body (11) projecting from the flange (3) is moulded, characterised in that the outer contour of the transmission body (11) has an oval or ellipsoid shape and, when the disk (5) is mounted on the flange (3), [said outer contour] is curved in the direction of the circumference of the disk, in that the transmission body (11) is inclined with respect to the direction of the circumference of the disk (5), in that the disk (5) comprises at least one recess (12) having an oval or ellipsoid shape, wherein the recess is inclined towards the direction of rotation (8) of the disk (5) and curved and has an inner contour that matches the outer contour of the transmission body (11), in that the position of the transmission body (11) matches the corresponding position of the recess (12), in that, when the disk (5) is mounted, the transmission body (11) of the flange (3) is supported in a tight-fit fashion (formschlüssig) by the inner contour of the recess (12) of the disk (5), in that the disk (5) comprises a through bore (9) that is tapered conically towards the drive motor and into which a bolt (7) can be inserted, and in that the bolt (7) can be screwed into a threaded hole (6) provided in the flange (3), such that the head of the bolt (7) is positioned in the conically tapered through bore (9) of the disk (5) and the free ends of the transmission bodies (11) and of the bolt (7) extend through the planes defined by the disk (5).

The Board found claim 1 to differ from prior art document D4 by five distinguishing features:

(a) the outer contour of the transmission body has an oval or ellipsoid shape;

(b) when the disk is mounted on the flange, the outer contour is curved in the direction of the circumference of the disk;

(c) the transmission body is inclined with respect to the direction of the circumference of the disk;

(d) the disk comprises at least one recess having an oval or ellipsoid shape that is inclined towards the direction of rotation of the disk and curved; and

(e) the bolt can be screwed into a threaded hole provided in the flange.

The following paragraphs are taken from the Board’s discussion of the inventive step of this claim.

*** Translation of the German original ***

Effect of the distinguishing features

[4.3.1] According to the understanding of the appellant, which the Board considers to be correct and supported by the description of the application under consideration, the features (a) to (d) have the effect that the disk can be positioned precisely on the flange […].

As far as the at least one transmission body of the flange is concerned, the features (a) and (b) define its shape (in a sectional plane) and feature (c) defines its arrangement.

Feature (d) defines the corresponding [properties] of the at least one recess of the disk.

As regards the understanding of features (a) to (c) the Board – in favour of the appellant – bases its reasoning on the understanding that the outer contour of the transmission body at first has the basic shape of an oval or an ellipse (feature (a)) and that it is subsequently shaped in such a way that the transmission body is (over at least part of its length) curved in the direction of the circumference (feature (b)) and that the transmission body is arranged in such a way that it is inclined with respect to the direction of the circumference (feature (c)).

The same holds true for the shape and the arrangement of the recess in the disk.

As a consequence of this shape and arrangement of the at least one transmission body and the corresponding recess an interaction between the transmission body (or several transmission bodies) and the corresponding recess(es) is possible only if the disk is fit to the flange when the correct side of the disk faces the flange.

[4.3.2] Distinguishing feature (e) corresponds to an embodiment that differs – from a constructive point of view – from a power tool according to D4 by the way in which the bolt is screwed into the tool. Feature (e) was not discussed during the oral proceedings. It does not have any influence on the effect of the distinguishing features (a) to (d) and, when combined with the other features of claim 1, apparently does not give rise to any effect that has to be taken into account when inventive step is assessed.

The problem

[4.4] Considering the power tool according to the closest prior art D4 and taking into account the above mentioned effect of the distinguishing features (a) to (d), the problem to be solved corresponds to the first partial problem […], i.e. to adapt the known power tool such that the disk can be positioned precisely on a predetermined position of the flange.

The first partial problem is solved by a power tool having an appropriate shape of the flange, comprising at least one transmission body and the corresponding shape of the disk, comprising at least one recess, according to claim 1.

Obviousness

[4.5] When, depending on the way and the application in which the power tool according to D4 is used, [the skilled person] is confronted with the problem of positioning a disk precisely on a predetermined position of the flange, or in other words, of avoiding that the disk can be positioned on the flange in a position that is different from the precisely predetermined position, then it would be obvious to solve the first partial problem by arranging the known elements by which the disk is positioned on the flange, i.e. the pins, which have a circular cross-section and which are arranged symmetrically with respect to the centre of the flange, as well as the corresponding recesses, in an asymmetrical manner, so that the disk can be fit to the flange only from one particular side.

[4.5.1] In this context the Board agrees with the opinion of the appellant according to which there was a simple way of solving the partial problem in a way that differed from claim 1 and which allowed to keep the circular cross-section. If, as in D4 (Fig. 1), there were two pins, it was sufficient to asymmetrically arrange the two pins of the flange and the two recesses on the corresponding disk rather than having a symmetrical arrangement (in the circumferential direction) as in D4.

[4.5.2] However, the Board cannot endorse the further argumentation of the appellant, according to which, considering said obvious solution to the first partial problem, the different solution according to claim 1 cannot be considered to be obvious.

The Board is of the opinion that the present circumstance that, when starting from the power tool according to D4, there is another, obvious solution, which is different from the solution according to claim 1, cannot as such automatically lead to the conclusion that a further solution, such as the one of claim 1, is to be held non obvious.

[4.5.3] In the Board’s view, as far as the solution to the first partial problem according to claim 1 is concerned, and irrespective of any further obvious solutions, it rather has to be examined to which extent the solution according to claim 1 as such can be considered to involve an inventive step when starting from the closest prior art D4 and taking into account the remaining prior art, here D1/D2.

Prior art document D1/D2 discloses a power tool comprising a disk that can be fitted onto a flange, which is comparable in view of the allocation of a disk to a flange, and, therefore, in view of the first partial problem to be solved (cf. […] D1, figures 2 and 6).

When starting from the power tool according to D4, the skilled person would consider document D1/D2 because this document also aims at solving a problem that corresponds to the first partial problem. According to D1/D2, each transmission body and, accordingly, each recess that is associated with it, is arranged asymmetrically on the flange […]. According to an embodiment of D1/D2, one transmission body has a triangular shape and another has a U-shape, and the recesses in the disk have a corresponding shape […]. The transmission body and the recess, therefore, lead to an asymmetric configuration only because of their shape and arrangement – there is no need for an inclined arrangement of the triangular transmission body and the recess according to feature (c) […]. The effect is that the disk can be fit to the flange only from one particular side.

The Board is of the opinion that, starting from the power tool according to D4 and considering the way in which D1/D2 has solved the first partial problem, it is to be considered obvious to arrange the transmission bodies having a circular cross section according to D4, in an asymmetrical manner, by changing their cross sectional shape, taking into account the approach according to D1/D2.

It also has to be taken into account – as explained by the Board during the oral proceedings – that the features (a) to (c) of claim 1 concerning the shape and arrangement of the transmission body contribute to the solution to the first partial problem only to the extent that they lead to an asymmetrical arrangement of the transmission body on the flange. The same holds true for the disk, in view of feature (d). The shape or the arrangement of the transmission body (or the recess, respectively) does not contribute to the solution of the first partial problem beyond that point.

In this regard, the shape and the arrangement of the transmission body (and, in analogous manner, of the recess), such as, for instance, a kidney-shaped design, which features (a), (b) and (d) aim at, according to the appellant, are irrelevant and, therefore, arbitrary, if only the asymmetrical arrangement is maintained.

[4.5.4] As a consequence, the features (a), (b) and (d), which are directed to specific – not necessarily asymmetric – cross sectional shapes of the transmission body and the recess, cannot, neither alone nor in combination with the remaining features of claim 1, lead to subject-matter that involves an inventive step, because, as already explained, the cross-sectional shapes defined by those features cannot be ascribed any further effect beyond their asymmetrical arrangement according to feature (c) in view of the first partial problem to be solved.

[4.5.5] For the sake of completeness, it has to be noted in this context that, starting from the circular cross section of the transmission bodies according to D4, and taking into account the triangular cross section according to D1/D2, the transformation of the known spherical cross section into an oval one appears to be obvious.

As a consequence, the whole power tool according to claim 1 does not involve an inventive step within the meaning of A 56 over the closest prior art D4 of the further prior art according to D1/D2 is taken into account for solving the first partial problem.

[4.6] The above result also holds true if the further arguments of the appellant are taken into account.

[4.6.1] The further main argument of the appellant is based on a further effect of the features (a) and (d) within the combination of features of claim 1, which goes beyond the solution of the first partial problem and solves the second partial problem concerning the connection for operating the drive (triebliche Wirkverbindung) […]. According to this second problem of the present application […] an appropriate (gattungsgemäß) power tool is to be developed in such a way that the connection for operating the drive is both reliable and permanently available.

[4.6.2] The appellant is of the opinion that this problem is solved because, as explained in the description […] the transmission bodies fit without clearance to the recesses where the force is transmitted, which results in the torque of the flange being optimally transmitted without there being any abrupt stresses or peak values of shear forces resulting therefrom.

Moreover, as also stated in the description […] the available surface on which the torques act, is considerably increased by the inclined arrangement of the transmission bodies and recesses according to features (b), (c) and (d).

[4.6.3] Neither D4 nor D1/D2 contained any suggestion to shape and arrange the at least one transmission body and the corresponding recess according to features (a) to (d) in such a way that the power transmission via the at least one transmission body and the corresponding recess was also improved in view of solving the second partial problem. Document D4 only disclosed in this respect that two shear pins extending through corresponding through holes in the grinding disk were provided for the power transmission […]. As explained in the present application, the diameter of each recess was to be greater than the diameter of the corresponding pin in order to correct any manufacturing inaccuracies. In particular when the power tool was switched on and off, there would be strokes because the clearances resulting therefrom had to be overcome, and these strokes would lead to increased shear forces […] and could result in increased wear

[4.6.4] Moreover, the shape and arrangement of the at least one transmission body and the corresponding recess according to features (a) to (d) would greatly increase the available surface on which the torques could act […] so that the surface pressure between the transmission body and the recess was advantageously reduced.

[4.6.5] As regards the interaction between the transmission bodies and the recesses, D1/D2 only taught that the disk could be positioned precisely on a predetermined position of the flange thanks to an appropriate design and arrangement of these elements. According to this document, a further flange was provided between the flange and the disk for the power transmission (see figure 1 of D2 […]; there was no statement in D1/D2 on any interaction between the transmission body and the recesses in view of the power transmission.

[4.6.6] As a consequence, a combination of documents D4 and D1/D2 would not have led to the design and arrangement of the at least one transmission body and the corresponding recess according to features (a) to (d) in view of improving the co-operation of these elements to the transmission of power from the driven flange to the disk.

[4.7] Regarding this line of argument directed at the solution of a second partial problem, the Board is of the opinion that, as far as the assessment of inventive step is concerned, it may remain unanswered to which extent the power tool according to claim 1 may be considered obvious over the present prior art as solution to the second problem, when, as explained above […] the whole claimed power tool does not involve an inventive step as solution to the first problem over the present prior art.

[4.7.1] Moreover, the Board is of the opinion that, taking into account the corresponding arguments of the appellant, the power tool of claim 1 is to be considered obvious with respect to documents D4 and D1/D2 even if, as argued by the appellant, the second partial problem is taken into account.

First of all, as regards the power tool defined in claim 1, it is questionable to which extent the mentioned effects (absence of clearance, increased surface for power transmission) can be derived from the combination of claim 1 with the features (a) to (d). As far as the allocation of the transmission bodies to the recesses without any clearance is concerned, claim 1 – as explained by the Board during the oral proceedings – does not contain any explicit indication. The same holds true for the greatly increased surface that is said to be available for the transmission of power, because claim 1 does not contain any definition regarding the dimension of the cross sectional areas of the transmission bodies and the recesses, respectively, nor does it define the extent of the inclined positioning of those elements.

[4.7.2] But even if it is considered, in favour of the appellant, that these effects are indeed obtained as a consequence of the combination of features of claim 1, the line of arguments based thereon is not persuasive.

The Board is of the opinion that it may indeed remain unanswered to which extent document D1/D2 teaches that, as contested by the appellant, the transmission bodies and recesses of the embodiment according to figures 6(a) and 6(b) (in connection with figure 2) of D1 contribute to the power transmission from the driven flange to the disk.

[4.7.3] As a matter of fact, in view of the contribution of the at least one transmission body and the corresponding recess, it has to be taken into account that in the power tool according to D4, these elements already co-operate in the way in which they were said to co-operate in the argumentation of the appellant in view of the power tool according to claim 1. In this respect, D4 explains that “for the transmission of power, two shear pins are provided on the driving shaft 5 and extend through corresponding through holes in the grinding disk 4” […].

One has to consider that the skilled person, when designing the transmission bodies and the recesses asymmetrically, according to D4 taking into account the approach according to D1/D2 […], would not modify the power transmission via those elements, not only because of the explicit reference to this way of transmitting power in D4, but only because in the power tool according to D4, according to the approach of claim 1 […] the disk is held on its side that is opposite to the drive motor only by means of a fixing screw (see D4, figure 1). Therefore, a power tool according to the closest prior art, similar to a power tool according to the present application (figure 1) and contrary to the one of D1/D2 (cf. figure 2) does not have a second flange which could also serve for power transmission.

[4.7.4] For the sake of completeness, it should be noted that the skilled person further developing the closest prior art in order to solve a technical problem, here the first partial problem, has no reason to carry out modifications that do not contribute to the solution of the problem, in the present case by modifying the shape of the at least one transmission body and the corresponding recess. This is particularly true when, as in the present case, the modification would considerably change the construction of the power tool because it would modify the constructive elements serving the power transmission.

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T 606/08 – Crystal Clear

2012-01-16T02:01:00.004+01:00

When a claim is amended based on parts of the description, is it necessary to incorporate all the features disclosed in that part? The answer is no, for the features the skilled person would understand to be inessential, as explained in T 331/87 (criticized in T 910/03, but see also T 404/03 [11]). The present case reminds us that there is another case to be considered: the deletion of a feature in a claim is admissible if the sole purpose of such deletion is to clarify and/or resolve an inconsistency. (T 172/82).

The application as filed concerned an “amorphous diamond coating of blades”. Claim 1 as granted read:

A process for forming a razor blade wherein a layer of amorphous diamond (60) is deposited on a substrate (50), comprising the steps of:
(a) providing a substrate;
(b) forming a wedge-shaped sharpened edge on said substrate that has an included angle of less than thirty degrees and a tip (52) radius of less than 1,200 angstroms; and characterized by
(c) depositing a layer (60) of amorphous diamond on said sharpened edge; applying an initial high bias to the substrate (50) during deposition, and then applying a second lower bias to the substrate during deposition.

The patent was revoked by the Opposition Division.

Claim 1 of the main request before the Board read (the underlined parts are amendments with respect to claim 1 as granted):

A process for forming a razor blade wherein a layer of amorphous diamond (60) is deposited on a substrate (50) using a cathodic arc source, comprising the steps of:
(a) providing a substrate;
(b) forming a wedge-shaped sharpened edge on said substrate that has an included angle of less than thirty degrees and a tip (52) radius of less than 1,200 angstroms; and characterized by
(c) depositing a layer (60) of amorphous diamond on said sharpened edge; applying an initial high bias in the range of 200 to 2000 Volts to the substrate (50) during deposition for up to two minutes to establish adhesion, and then applying a second lower bias in the range of 10 to 200 Volts to the substrate during deposition to optimize the structure of the amorphous diamond coating.

This amendment was based on page 13, lines 25 to 32 of the application as filed:

Will the Board accept the amendment?

[1.1] Process claim 1 of the main request has been restricted to the use of a cathodic arc source; it is based on original claims 1 and 6 in combination with the bias voltage ranges of the two deposition steps taken from page 13, lines 25 to 32 of the application as originally filed (corresponding to the published D5). The deposition steps are disclosed as: “An initial high bias in the range of 200-2000 volts is applied to the substrate during deposition for up to two minutes to establish adhesion. A second stage lower bias in the range of 10-200 volts is then applied to optimize the structure of the amorphous diamond hard carbon coating and to establish the desired crystal structure” (emphasis added by the Board).

[1.1.1] It goes without saying that said bias voltage values are negative so that the missing minus signs need not be incorporated into claim 1.

[1.1.2] The omission of the feature “to establish the desired crystal structure” in the amendment, which the Board in point 4 of its communication considered to be inconsistent with the definition “amorphous diamond”, is in the present case, in line with decision T 172/82, not to be objected under A 123(2) since its inclusion would result in an inconsistency contrary to A 84. Amorphous diamond normally does not have a crystal structure.

[1.1.3] There exists also no need to incorporate the term “hard carbon” after the expression “amorphous diamond” […] since it is clear that the resulting amorphous diamond coating is a particularly hard carbon (see patent, paragraph [0007]). The omission of the term “hard carbon” from the amendment thus complies with A 123(2).

[1.1.4] The aforementioned passage […] is the only one in the description of D5 (the same holds true for the claims dependent upon claim 1 as originally filed) which discloses these – originally preferred – two bias voltage ranges and is taken from the paragraph named “Process Conditions and Adjustments.” This passage is preceded by the statement “Process conditions include a multi-step bias to the substrate; an equal average deposition on both sides of the blade; and attention to the angle of presentation” (see D5, page 13, lines 20 to 32).

Consequently, according to this more general disclosure the multi-step bias is to be combined with an equal average deposition on both sides of the substrate (see also page 14, lines 1 to 3, lines 7 to 9 and lines 29 to 32) and a specific angle of presentation of the substrate to the arc source. This angle is either measured from a line normal to the plane formed by the tips of stacked blades or from the line bisecting the angle enclosed by the tip and the first and second inclined surfaces of the cutting edge of an unstacked blade (see page 15, lines 12 to 23). This disclosure is also in line with the single example of a particular processing sequence (see page 9, line 9 to page 12, line 8).

[1.1.5] The result of this amendment is that claim 1 of the main request – which is now not restricted to depositing a layer of amorphous diamond “at an equal rate or simultaneously on both sides of the substrate” nor to a definition of the angle of presentation – contravenes A 123(2), as it has selectively taken up only the bias voltage ranges from the description as originally filed. This amounts to an unallowable “intermediate generalisation” of the two passages disclosed in D5 at page 13, lines 21 to 24 and at page 13, lines 25 to 32 since the two-step bias deposition without the above mentioned two features is not directly and unambiguously derivable from D5. A preliminary conclusion to this effect had already been drawn in point 4 of the Board’s communication annexed to its summons to oral proceedings.

[1.1.6] The arguments of the appellant to the contrary cannot hold for the following reasons.

An argument is that the equal deposition on both sides of the substrate and the angle of presentation of the substrate to the cathodic arc source do not represent essential features of the claimed process. However, this is contradicted by the aforementioned passage of page 13, lines 20 to 24 relating to the process conditions, which include both features. The amendment is therefore not directly and unambiguously derivable from the application as originally filed.

The quoted statement concerning “an uneven or unbalanced layering” (see D5, page 15, lines 8 to 11) does not support the suggestion that the invention could involve the deposition of an amorphous diamond coating on one side of the substrate only. It has to be seen in the context of the disclosure of the whole paragraph comprising it and to which it is restricted. This paragraph, however, deals with preferred forms of depositing the amorphous diamond coating in a thickness of 1000 angstroms on both sides of a blade stack, i.e. several substrates, either by a simultaneous deposition on both sides or a cyclic alternation on the first and second side of the substrate until the desired thickness is built up on both sides (see page 14, line 33 to page 15, line 8). In the Board’s view this statement makes only sense in the context of the cyclic alternation embodiment – if there is a simultaneous deposition than there should be equal deposition on both sides of the substrate due to the movement of the substrate or the blade stacks - and could be interpreted as meaning that the cycle lengths for each of the two sides may be different so that the individual intermediate layers produced on the first side of the substrate after a first cycle and on the second side after the second cycle can have different thicknesses (e.g. it may be 100 angstroms on the first side of the substrate after a first coating cycle while that on the second side after the second coating cycle may be 500 angstroms, etc. and so on up to a final total thickness of e.g. 1000 angstroms). This statement, however, does not necessarily imply that the final desired coating thickness on both sides must be different.

[1.1.7] Claim 1 of the main request is therefore not allowable.

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T 1803/09 – Wrong Approach

2012-01-14T20:01:00.002+01:00

The applicant filed an appeal against the decision of the Examining Division refusing its application.

Claim 1 of the main request before the Board read:

1. A method for predicting cardiac mortality in a chronic congestive heart failure (CHF) patient, said method comprising the steps of:
(A) assaying for the presence of a cardiac marker of cell injury in a body fluid sample drawn from said patient using:
a first antibody that specifically binds to a cardiac marker of cell injury, wherein said cardiac marker of cell injury is cardiac Troponin-I; and
(B) assaying for the presence of a marker of organ adaptation in a body fluid sample drawn from said patient using:
a second antibody that specifically binds to said marker of organ adaptation, wherein said marker of organ adaptation is selected from the group consisting of ANP, N-terminal ANP, BNP, N-terminal BNP and CNP,
wherein when both said marker of cell injury and said marker of organ adaptation are present in said sample at significantly increased levels as compared to control samples from normal individuals, said patient is predicted to have an increased prognosis of cardiac mortality. (my emphasis)

There was agreement on the fact that the subject-matter of this claim was not explicitly disclosed in the application as filed, but the applicant pointed out that the disclosure was implicit.

The Board won’t have it:

[7] The appellant does not contest the absence of an explicit disclosure of the subject-matter of claim 1 […] in the application as filed, but its argumentation relies on an implicit disclosure of this subject-matter which, in the appellant’s view, is directly and unambiguously derivable from the application as filed when taken as a whole, the specific teachings of the Example assisting the skilled person to understand the general disclosure (T 40/97), and from the fact that said disclosure and teachings would prompt the skilled person to seriously contemplate the use of the claimed combinations of markers in the method of the Main Request or of Auxiliary Requests 1 to 3 in chronic CHF patients (T 187/91 and T 296/96).

[7.1] The board agrees with the appellant that the entire disclosure of the application as filed is focused on the heart as the organ of study and, in particular, on CHF. However, as stated in the application as filed when acknowledging prior art concerned with CHF […], various and different causes may be at the origin of CHF and, although some of them may be shared by both acute and chronic CHF, these two conditions are differentiable and distinguished – albeit, admittedly, broadly defined. Thus, contrary to the appellant’s view, the term “CHF” as used in the application as filed can not always be, only and exclusively, equated to “chronic CHF”. Although the former term includes the latter, it is much broader and includes other conditions, such as “acute CHF”.

[7.2] The board does not share the appellant’s view that the tests and methods disclosed in the application as filed for use in CHF patients are appropriate only for “chronic CHF” and not for “acute CHF”. Early, preliminary diagnosis methods may distinguish and differentiate patients with one of these conditions. Likewise, methods may be developed for monitoring the long-term management (efficacy of therapeutic agents) of each of these two CHF conditions. Indeed, the references in the application as filed to “methods for distinguishing CHF” may be interpreted as referring to methods for distinguishing CHF from other heart failures as well as methods for distinguishing – at an early, preliminary stage – different CHF conditions. If at all, these references are ambiguous. It is worth noting here that not all tests and methods referred to in the application as filed are necessarily concerned with the prediction of CHF mortality. A test for early, preliminary diagnosis for CHF may well inform about the specific type of CHF condition but may be of limited value, or of no value at all, for the prediction of the severity or mortality of this condition.

[7.3] Although the sole method exemplified in the application as filed refers to criteria for selecting markers of cell injury and organ adaptation having elevated levels in CHF patients, it is also explicitly stated that

“(h)owever in patients with chronic heart failure, it is unclear whether there is a relationship between either elevated levels of cTnI alone, or in conjunction with elevated levels of pro-ANP, and survival” (emphasis added by the board) […].

Although this uncertainty is set aside for the specific marker combination disclosed in the Example, the board does not see the results reported in the Example for cTnI and pro-ANP to be directly and unambiguously transferable to all other possible combinations of markers fulfilling said criteria. Indeed and contrary to the appellant’s view, the same uncertainty remains for other markers, their possible combination does not necessarily have to provide similar or identical results to those obtained with cTnI and pro-ANP. If at all, the sentence referred to above is ambiguous.

The results shown in the Example may well render the combination of other markers obvious or, in other words, they may be for the skilled person obvious to try but this is not a criteria to apply under A 123(2). These combinations are not a direct and unambiguous consequence of the results shown in the Example nor a consequence directly and unambiguously derivable from the application as filed when taken as a whole.

[7.4] Thus, not all tissue or organ failures, damages or diseases within the above identified group A) can be directly and unambiguously equated to “chronic CHF” […]. Likewise, not all subject-matter within the above identified group C) can be directly and unambiguously understood as relating to mortality prediction for chronic CHF patients […]. Moreover, on the basis of the results shown in the Example of the application as filed, not all possible marker combinations within the above identified group B) can be seen as being directly and unambiguously interchangeable in the method of that Example […]. The identification of three groups of interrelated subject-matter and the different levels of generalization for each of them is not artificial and inappropriate but it is clearly derivable from the application as filed taken as a whole.

When reading the application as filed, the skilled person would not recognize that the feature “chronic CHF” is equally applicable to “all marker combinations” disclosed in the application, let alone that all marker combinations might be useful “for predicting cardiac mortality” in a patient with this specific CHF condition. This reading can only arise when using the disclosure of the application as filed as a large reservoir from which parts are arbitrarily taken and combined. Such a reading, however, is not allowable under A 123(2) […].

[8] Thus, there is no implicit disclosure in the application as filed of the subject-matter of claim 1 […].

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T 692/09 – No Experiments Needed

2012-01-13T02:01:00.002+01:00

The appeal was filed by the opponent whose opposition had been rejected by the Opposition Division.

Claim 1 as granted read:

1. A laundry detergent composition comprising a bleach system which contains a hydrogen peroxide source and at least 2.5% by weight of a peroxyacid bleach precursor, at least 15% by weight of a carbonate source, which may include the hydrogen peroxide source, at least 7% by weight of an acid, preferably an organic acid, whereby a 1% by weight mixture of the composition in demineralised water provides a pH from 8.8 to 9.9, and which further comprises an anionic surfactant.

The decisive question before the Board was whether this claim involved an inventive step:

[2.1] Claim 1 of the patent-in-suit […] defines a GP laundry detergent composition (i.e. a laundry detergent composition generating in situ peroxyacid bleach) containing a hydrogen peroxide source, a peroxyacid bleach precursor (at least 2.5% by weight), a carbonate source (at least 15% by weight) which may simultaneously be the hydrogen peroxide source, an acid (at least 7% by weight) and an anionic surfactant, whereby a 1% by weight mixture of the composition in demineralised water provides a pH of from 8.8 to 9.9.

[2.2] In order to correctly identify the prior art of departure for the assessment of inventive step it is necessary to consider the statements contained in the patent-in-suit as to the technical problem addressed by the invention.

[2.2.1] The Board notes that paragraphs [0002] to [0008] of the patent-in-suit describe the background of the invention by referring to difficulties in formulating GP laundry compositions (i.e. composition in which a peroxyacid bleach is generated in situ from a precursor thereof and from a source of hydrogen peroxide) capable of providing efficient sanitisation simultaneously with excellent cleaning. These difficulties are attributed to the fact that while an highly alkaline pH is necessary for generating the peroxyacid bleach and favoured by certain conventional ingredients of GP laundry compositions (such as percarbonate or certain builders), the same highly alkaline pH is also known to promote dissociation of the acid form of the peroxyacid required for sanitisation. Consistently, the technical problem underlying the invention is then identified in paragraph [0009] of the patent-in-suit as that of providing “efficient antimicrobial performance and/or sanitisation whilst a good cleaning of both bleachable and non-bleachable stains is achieved”.

The patent-in-suit provides examples of the patented compositions. Some quantitative information on the level of biocidal activity aimed at is provided in paragraphs [0016] to [0019] of the patent-in-suit that describe a standard method for measuring the activity of microorganisms and a list of the relevant microorganisms, identify the minimum concentration at which the laundry composition should be used relative to the initial concentration of microorganisms and define some specified minima for the reduction in microorganism activity to be observed.

[2.2.2] The Board considers appropriate to stress that this description of the addressed problem of the background art given in the patent-in-suit appears consistent with the common general knowledge as derivable from the available non-patent literature of documents D12, D14 and D18. These citations confirm indeed that the skilled person would know that in the case of GP laundry compositions the acid form of the peroxyacid prevailing at lower pH is in general much more effective in providing sanitisation than its anionic form prevailing under alkaline conditions […]. Moreover, document D18 explicitly recognises that there is a necessity of “potentiating” the sanitising activity of the peroxyacid anion in the alkaline wash baths […], thereby implicitly confirming the existence of difficulties in achieving good sanitisation under the alkaline conditions required for peroxyacid generation and good bleaching.

[2.2.3] Hence, the skilled reader of the whole patent disclosure is correctly reminded of the existing common general knowledge as to the fact that the GP laundry compositions of the prior art containing a carbonate source that produce highly alkaline wash baths and result in good bleaching normally do not provide satisfactory sanitisation. Accordingly, the skilled person can only reasonably interpret the aimed “efficient antimicrobial performance and/or sanitisation” indicated in paragraph [0009] of the patent-in-suit as a level of sanitisation superior to that expected for the GP laundry compositions containing a carbonate source that produce highly alkaline wash baths. Hereinafter the aimed combination of good levels of sanitisation and bleaching is also indicated as efficient sanitisation with good bleaching.

[2.3] The [opponents] have considered reasonable to assess inventive step starting from any of the two examples of departure […].

In view of the technical problem indicated in the patent-in-suit and discussed above, and considering that:

both these prior art examples are GP laundry compositions containing a carbonate source and providing good cleaning […] and
that the subject-matter of claim 1 of the patent-in-suit only differs from example 1A of document D1 as well as from example 1 of document D3 in that claim 1 requires a 1% by weight mixture of the patented laundry composition in demineralised water to have a pH of from 8.8 to 9.9,

the Board concurs with the [opponents] that it was reasonable for a skilled person to start from one or the other of these prior art examples.

[2.4] In a first line of reasoning in view of A 56, the [opponents] have combined each of the two examples of departure with the document D9 or with document D11.

In particular, they have considered that, in the absence of any experimental data demonstrating the superior sanitising effect of the patented composition in comparison to those observable in one or the other of the two examples of departure, the statement as to the efficient sanitisation in paragraphs [0008] and [0009] of the patent-in-suit would just be an allegation of an improvement that, as indicated e.g. in the decision of the Boards of Appeal T 1392/04 [20], required experimental evidence in order to be considered for the assessment of inventive step.

Since it would not be credible that the patented GP laundry compositions provided a level of sanitisation superior to that of the prior art of departure, the subject-matter of claim 1 of the patent-in-suit represented just an optimization of the prior art, optimization that was rendered obvious by the combination of one or the other of the two examples of departure with document D9 or D11.

[2.4.1] The Board notes however that the referred passage in T 1392/04 only relates to the credibility of a statement of the patent proprietor that the patented subject-matter would provide an improvement of “some particular property of the closest prior art” (emphasis added by this Board), i.e. an improvement of one of the properties already disclosed in the prior art (such as those indicated at point [13] of the Reasons in this decision).

[2.4.2] The content of T 1392/04 [20] is, thus, not similar to the issue raised by the present case wherein, as argued by the patent proprietor, the skilled reader of the relevant prior art document would not know if the examples of departure also provide an efficient sanitisation or not.

Indeed, the absence of specific information in documents D1 or D3 as to the (final) pH of the wash baths produced when using one or the other of the two examples of departure, and the fact that it is not even possible to presume that these examples produce a 1% by weight wash bath with a pH in the range of 8.8 to 9.9 (and, thus, necessarily obtain the aimed combination of efficient sanitisation with good bleaching) has not been disputed by the [opponent].

It is also undisputed that, whereas document D1 does not mention at all disinfection or any other expression related to sanitisation, document D3 only contains a single reference at page 8, lines 41-42, as to the fact that the optional ingredient “oxygen bleach” of the laundry compositions disclosed therein can “provide a multitude of benefits such as bleaching of stains, deodorization as well as disinfectancy”.

The Board concurs with the [patent proprietor] that this passage is only a vague general statement, insufficient at justifying any reasonable prediction of the skilled reader of document D3 as to whether the specific composition of e.g. example 1, based on the specific peroxyacid bleach produced by the presence therein of percarbonate, would also provide some sanitisation, and even less the aimed effective sanitisation.

Accordingly, and in the absence of any evidence to the contrary, the Board has no reason for rejecting the argument of the [patent proprietor] that no combination of efficient sanitisation with good cleaning is disclosed to be present or to be predictable in any of the two examples of departure.

[2.4.3] Thus, the Board finds that no comparative experimental evidence is required for concluding that the subject-matter of claim 1 of the patent-in-suit solves vis-à-vis each of the two examples of departure the same technical problem mentioned in the patent-in-suit, i.e. that of providing GP laundry compositions capable of producing in combination efficient sanitisation and good bleaching (see above point [2.2.3]).

[2.4.4] The Board concludes therefore that the [opponents’] first line of reasoning resumed above at point [2.4] is not convincing already because it fails to correctly identify the technical problem solved.

The Board then also dismissed the opponent’s second line of reasoning and came to the conclusion that claim 1 involved an inventive step.

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T 520/06 – Walk The Line

2012-01-12T02:01:00.003+01:00

Opponent 3 filed an appeal after the Opposition Division (OD) had rejected the opposition.

Claim 1 before the Board (which corresponds to claim 1 as granted) read:

A precipitated silica characterised in that it has:
a CTAB specific surface area (SCTAB) of between 140 and 240 m2/g,
a porous distribution such that the porous volume formed by pores whose diameter is between 175 and 275 Å represents less than 50% of the porous volume formed by pores of diameters less than or equal to 400 Å,
an ultrasound disagglomeration factor (FD) of higher than 5.5 ml, and
a median diameter (Ø50) after ultrasound disagglomeration of less than 5 μm,
and is in at least one of the following forms: substantially spherical balls of a mean size of at least 80 μm, powder of a mean size of at least 15 μm and granules of a size of at least 1 mm.

and independent process claim 6 read:

A process for the preparation of a silica according to one of claims 1 to 5 comprising the reaction of an alkali metal silicate M with an acidifying agent, thereby obtaining a precipitated silica suspension, then separation and drying of said suspension, characterised by effecting precipitation in the following manner:
(i) forming an initial vessel bottoms comprising a part of the total amount of the alkali metal silicate M involved in the reaction, the concentration of silicate (expressed as SO2) in said vessel bottoms being at most 15 g/l,
(ii) adding the acidifying agent to said initial vessel bottoms until at least 50% of the amount of M20 present in said initial vessel bottoms is neutralised, and
(iii) simultaneously adding to the reaction medium acidifying agent and the remaining amount of alkali metal silicate M such that the ratio of the amount of silicate added (expressed as Si02)/amount of silicate present in the initial vessel bottoms (expressed as Si02) is between 12 and 100.

Among other things, the Board dealt with the objections that claim 6 did violate A 123(2) and that claim 1 was not novel:

*** Translation of the French original ***

[2.1] Process claim 6 is based on process claims 1 to 3 of the application as filed. However, the initial silicate concentration […] according to claim 6 of the patent is limited to “at most 15 g/l” whereas the independent process claim 1 of the application as filed only requires a value “less than 20 g/l”.

[2.2] In application of the principle restated in T 925/98 [2] the Board considers that a limiting amendment consisting in a replacement of the upper limit “less than 20 g/l” of said range by the limit “at most 15 g/l” does not extend the subject-matter of claim 6 beyond the content of the application as filed.

[2.2.1] In the present case, the value of the upper limit of a narrow preferred range (“between 10 and 15 g/l; cf. claim 11 of the application as filed) is used to delimit the more general range which has an upper limit of 20 g/l (cf. claim 1 of the application as filed) but which is not limited by a precise value at its lower end.

[2.2.2] It has been submitted that the principle restated in T 925/98 does not apply to the present case. It is not obvious to the Board why this principle would not be applicable to the particular case of a larger range of values corresponding to an open interval, i.e. which has been formulated without any indication of a precise value for one of the two boundaries of said interval. […]

[9] Document D2, which was cited as a novelty-destructive document, discloses the preparation of precipitated silica and their use as reinforcing filler for elastomers […]. According to D2, said silica are easily dispersed and have improved reinforcing properties. They are obtained by reacting silicate with an acidifying agent and have granular, powder or bead shape.

[9.1] Generally speaking, the precipitated silica disclosed in document D2 have a specific surface area SCTAB between 140 and 200 m2/g […]. The granules preferably have a dimension between 1 and 10 mm […]. The powders generally have an average granulometry (D50) of between 5 and 70 μm, preferably between 10 and 30 μm […] and the beads have an average size of at least 80 μm […]. The powders and the beads according to D2 preferably have an ultrasound disagglomeration factor that is greater than 6 ml or 5.5 ml, respectively […] and have a median diameter (Ø50) after ultrasound disagglomeration of less than 4.5 μm or 5 μm, respectively […]. As far as the above cited parameters are concerned, the silica disclosed in D2 comply with the criteria mentioned in claim 1 of the opposed patent.

[9.2] However, the precipitated silica according to D2 are characterised by a very particular distribution of their porous volume, this distribution being expressed by means of the ratio (in %) between the porous volume constituted by the pores having a diameter between 175 Å and 275 Å and the porous volume constituted by the pores having diameters of less than or equal to 400 Å, this ratio being referred to as “V2/V1” […]. Said ratio V2/V1 is of at least 60%, preferably of at least 65%, for granules, and of at least 50%, preferably of at least 60%, for powders and beads.

[10] Now, the Board is of the opinion that the claim feature of the patent under consideration regarding the distribution of porous volume, which can be expressed in the form of the condition that V2/V1 < 50% limits claim 1 to silica which the skilled person can distinguish from silica having a ration V2/V1 of 50% or more by means of measurement according to the method cited in the patent under consideration (mercury porosimetry) […], which by the way is the same as the one in D2 […].

[11] Contrary to the opinion of the [opponent], claim 1 of the patent under consideration unambiguously excludes the products disclosed by D2 […], i.e. precipitated silica having powder or bead shape and a V2/V1 ratio ≥ 50% as well as granules having a ratio V2/V1 ≥ 60% and the silica according to example 12 of D2 where the V2/V1 ratio is equal to 61%.

[12] It has to be noted that D2 also discloses comparative products having a V2/V1 ratio that is clearly smaller than 50% (cf. table I and example 2; PC1: 43%; PC2: 46%). Products PC1 (Ø50: 7.4 μm, FD: 3.0 ml) and PC2 (Ø50: 9.9 μm, FD: 2.3 ml) however, do not comply with the criteria given in claim 1 of the patent under consideration according to which Ø50 < 5 μm and FD > 5.5. The V2/V1 value of the comparative products GRC1 and GRC2 mentioned in D2 (53% […]) is greater than 50% and its Ø50 and FD values are not given.

The smallest V2/V1 value given for a non-comparative product according to D2 is 57% […].

[13] Therefore, all the precipitated silica disclosed in D2, including the ones disclosed as comparative products, differ from the silica according to claim 1 of the patent under consideration at least regarding the distribution of their porous volume (according to the teaching of D2) and/or regarding the values for Ø50 and FD (comparative products in D2).

[14] In particular, the beads according to example 12 of D2 (comparative product MP1 according to the opposed patent) have a V2/V1 ratio (61%) that is greater than 50% and, therefore, are perfectly distinguishable from the claimed beads. This conclusion is not liable to be called into question in view of documents E2 and E4 which essentially only deal with the influence the sampling conditions can have on the results obtained when the V2/V1 values of granules are measured.

[15] As regards the decisions cited by the [opponent], the Board notes that they are not directly applicable to the present case, for the following reasons:

[15.1] The principle developed in decision T 594/01 [4.1.5] cannot be applied to the present case, be it only because the value of 50% mentioned several times in D2 is not an “experimental value” that has been concretely measured on an embodiment, but the lower boundary defining the range of V2/V1 values to be complied with (à respecter) according to D2. None of the examples of embodiments of D2 discloses a value equal to or even close to 50%, the smallest experimental value disclosed being equal to 57% […]. The V2/V1 values smaller than 50% mentioned in D2 (tables I and II) only concern the comparative products (“PC1” and “PC2”) and do not disclose the whole set of features of the product according to claim 1 of the patent under consideration […].

[15.1.1] According to the established case law of the Boards of appeal, including decision T 240/95 [4.2, 3rd §], a numerical range expressed as “from x to y” effectively constitutes a disclosure of the numerical values x and y. However, in the case of the patent under consideration, the range of claim 1 under consideration is formulated as an open interval having an upper boundary, i.e. “less than 50%”. This wording expressly excludes the value of 50%.

[15.1.2] Decision T 666/89 concerns situations of “selection” and “overlapping” of numerical ranges. However, in the present case, the respective ranges for the V2/V1 parameter in D2 and in the patent under consideration precisely do not overlap, because the interval defined by the expression “< 50%” does not have any point in common with the interval defined by the expression “≥ 50%”.

[15.1.3] Therefore, considering said decisions does not lead to a different assessment of D2 than the one given in points [13] and [14] above.

The claims were found to be novel and inventive.

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T 1914/08 – Total Recall

2012-01-11T02:01:00.002+01:00

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

After expiration of the time limit for filing an appeal, the opponent filed a “cross- appeal” (Anschlußbeschwerde) but he finally withdrew this appeal.

The patent proprietor requested the Board to maintain the patent as granted. Claim 1 as granted read:

1. Method for cleaning a UHT installation (1) for flowable foods comprising the steps:

(a) Placing a cleaning solution in a storage vessel (6,7),
(b) Cleaning the UHT installation (1) with a first portion of the cleaning solution,
(c) Discarding this first portion of the cleaning solution,
(d) Cleaning the UHT installation (1) with a second portion of the cleaning solution,
(e) Recirculating this second portion to the storage vessel (6,7),
(f) Rinsing the UHT installation (1) with fresh water,
(g) Collecting at least a portion of the rinse solution in step (f) in the storage vessel (6,7),
(h) Fortifying the solution in the storage vessel (6,7) with cleaning agent.

The decision contains some interesting statements on late filed documents and witness testimonies.

*** Translation of the German original ***

Consideration of documents D18 to D25

[2] Documents D18 to D25 were announced on May 4 and 13, 2009, by the [opponent] and filed together with a written submission dated August 26, 2011, about one month and a half before the oral proceedings (OPs) before the Board.

The [patent proprietor] is of the opinion that said documents were late filed, so that he did not have the opportunity to prepare himself properly. It should also be taken into account that the late filed documents concerned the alleged prior public use (PPU) and evidence therefor, respectively, and that all the evidence was in the sphere of the [opponent], so that all the [patent proprietor] could do was to point out gaps and inconsistencies of the evidence. This possibility would be seriously limited if the late filing of documents D18 to D25 was considered admissible.

According to the [opponent] the documents under consideration were not indispensable for establishing the alleged PPU Leche Pascual but could nevertheless provide further evidence for the prior use and invalidate (entkräften) the patent proprietor’s objections against the conclusions at which the OD had arrived when assessing the evidence.

The [opponent] has announced the filing of further documents related to the PPU at an early stage of the proceedings – in written submissions dated May 4 and May 13, 2009 – when reacting against the objections made by the [patent proprietor] in the statement of grounds of appeal. He justified the fact that the documents were filed only together with his written submissions of August 26, 2011, i.e. more than two years later and shortly before the date of the OPs (October 13, 2011) by the tense economic situation the [opponent] had had to face in the meantime.

In the exercise of its discretional power, the Board considers that the late filing of documents that had been announced earlier and which, therefore, were available, without any justification having a causal link to the present proceedings, does not comply with a regular way of conduction the proceedings.

Therefore the late filed documents D18 to D25 have not been admitted into the proceedings. […]

Prior public use

[4.1] According to the impugned decision […] the processing plant (Prozeßanlage) that is said to constitute a prior public disclosure has been delivered in the 1994/1995 period by the Gea Finnah company to the Grupo Leche Pascual company, the latter being both the purchaser and the operator of the plant. This delivery, for which there had been no confidentiality obligation, had made the plant available to the public. Moreover, the operation of this plant had made a process for cleaning a UHT installation available to the public, which process destroyed the novelty of claim 1 as granted, which is the only version that will be considered hereinafter […].

[4.2] When assessing the evidence, the OD has considered the witness testimonies of witnesses Tacke and Assing […] to be the essential pieces of evidence. Moreover, in the context of these witness testimonies, it has referred to documents D5 and D6 as “written evidence”.

[4.3] The Board is of the opinion that the two witness testimonies, which go beyond the disclosure of documents D5 and D6 – as far as the process plant alleged to have been the object of a PPU and the cleaning process are concerned –, are the decisive pieces of evidence by which the alleged PPU has been completely (lückenlos) established to the extent that is necessary in the present case. As both witnesses have referred to D5 for explaining their statements and as witness Tacke also used D6, these pieces of evidence comprise facts that can be taken from D5 and D6, insofar as they are comprised by the witness testimonies.

Each witness testimony as such gives a consistent and complete picture of the cleaning process which is to be established. Moreover, the witness testimonies agree with each other as far as the essential process steps of the cleaning process are concerned.

[4.4] Based on the content of the witness testimonies that has been taken into account in the impugned decision, and on the minutes of the hearing of witnesses Tacke and Assing, the Board considers the way in which the evidence was assessed by the OD, the underlying standard of proof and the outcome of the assessment to be correct.

The Board agrees with the [patent proprietor] that in the present case the applicable standard of proof is such that the alleged public prior use has to be established “beyond reasonable doubt”.

This follows from the fact that it is the legal predecessor of the [opponent’s] company who delivered the CIP (Cleaning In Place) plant under consideration and, therefore, caused the PPU, which means that the PPU belongs to his sphere of influence.

[4.5] The [patent proprietor], who considers that the PPU has not been established and contests its reality […] has tried to expose gaps and inconsistencies regarding the evidence of the opponent and shortcomings in the assessment of the evidence on behalf of the OD, both in the opposition and appeal proceedings.

The OD has not endorsed the corresponding objections, essentially because it considered the facts to be proven by means of the witness testimonies […].

[4.6] The Board considers the OD’s assessment of the situation to be correct.

[4.6.1] In particular, as far as the availability to the public is concerned, it is of the opinion that the impugned decision is right in coming to the conclusion that the CIP plant, which had been delivered by the Gea Finnah company to the Leche Pascual company, who was both purchaser and operator, has been made available to the public through this very delivery.

The Board is of the opinion that the same holds true for the assessment according to which the operation of the CIP plant for cleaning the UHT installation has made the process used for cleaning the UHT installation available to the public before the date of filing of the impugned patent. As a matter of fact, when the plant was sold, put into service and homologated (see witness testimony […]) all process steps have been carried out.

In this context the OD was right in coming to the conclusion that the delivery and operation of the plant was performed without there being any confidentiality obligation and that the Leche Pascual company acting as a purchaser and operator of the plant was a third party within the meaning of patent law, in the person of whom the CIP plant for cleaning a UHT installation under consideration as well as the process for cleaning the UHT installation carried out with it have been made available to the public.

[4.6.2] The impugned decision is also correct on the object of the PPU.

Accordingly, the witness testimonies have shown that the delivered CIP plant is suitable for carrying out the cleaning process according to claim 1 both in view of the means provided in the plant and its control and of the interaction with the UHT installation.

As far as the operating sequence of the cleaning process carried out in the plant of the PPU is concerned, the impugned decision refers to the process steps disclosed in D5 and uses the designations for the individual steps used therein. This is in agreement with the declarations of both witnesses who have kept their declarations on the operating sequence of the cleaning in line with the process sequence of D5.

The outcome is that the OD has considered that it has been proven that the process for cleaning a UHT installation carried out in the plant of the PPU comprised all steps of the process according to claim 1.

[4.6.3] It may be left open to which extent D5 is to be considered as an independent piece of written evidence alongside the witness testimonies – as the OD appears to have believed – because the two witness testimonies – partly referring to D5 – completely encompass its disclosure insofar as it concerns the object of the PPU in view of the process according to claim 1. The same holds true for D6 and the construction of the CIP plant, because the witness Tacke refers to this document in his deposition.

[4.6.4] Therefore, the objections of the opponent concerning the use of D5 and D6 as independent pieces of evidence are pointless because the witness testimonies are complete both in view of the construction of the CIP plant and – to the extent necessary – the UHT installation, and in view of the operating sequence of the cleaning process carried out on the UHT installation by means of the CIP plant to the extent required in the context of the process according to claim 1, and as such establish the alleged PPU.

As a consequence, it may be left open to which extent D5 and D6 are to be considered as independent pieces of evidence alongside the two witness testimonies.

For analogous reasons it is not necessary to consider declaration D16, which the [opponent] has used for supporting his argumentation alongside both witness testimonies, either.

[4.6.5] Concerning D5 and D6, the objection of the [patent proprietor] according to which it was not proven which version of D5 and D6 was available when the PPU took place, and what they disclosed, is also irrelevant. The same reasoning applies to the objection that D5 does not disclose the complete cleaning process and that the precise interaction of the CIP plant and the UHT installation in view of cleaning the UHT installation by means of the CIP plant is not apparent in D6. That the cleaning process has indeed been carried out in compliance with the process according to claim 1 follows from the relevant declarations of both witnesses, which are extensive and complete, as explained above.

In this context, it has to be taken into account that, according to the minutes of the hearing of the witnesses, the witness Tacke has been personally involved as project manager in the start-up of the plant until its homologation According to the minutes of the hearing of witness Assing, the same holds true for this witness, who was responsible for developing and implementing the complete software and who, therefore, was on site from October 1994 to June 1995. As a consequence, both witnesses could draw upon their recollections concerning the operating sequence of the cleaning process during the start-up of the delivered CIP plant in conjunction with the UHT installation.

[4.6.6] As far as the establishment of proof (Beweisführung) is concerned, the [patent proprietor] has explained that he did not question the reliability of the witnesses as such. However, as there were inconsistencies in the witness declarations regarding the dates at which the documents D5 and D6 were established / published and their content during the relevant period, there were indications that doubts concerning the witnesses’ powers of recollection were justified. This also held true for the witness declarations concerning the period and the object of the alleged PPU.

In this regard, it has to be noted, as explained above, that in the present case the PPU is considered to have been proven by the two witness testimonies. Therefore, links and details that can be found in D5 and D6 do only matter to the extent to which the witnesses have referred to them during the hearing.

Regarding the powers of recollection of the witnesses the general experience of life allows to act on the assumption that when actions that have taken place in the past, such as in the context of the present PPU, actions that are experienced directly (unmittelbar wahrgenommen), such as the construction of the CIP plant in conjunction with the UHT installation, as well as the start-up of the CIP plant for cleaning the UHT installation, wherein both witnesses have participated actively, according to their declaration, can be recollected much better than actions that are not readily assigned to such immediate perception. In the present case this concerns the moment at which D5 or D6, respectively, have been established and the version of each of these documents that was available in the period that is relevant for the PPU.

[4.7] Based on the fact that, as mentioned above, both witness testimonies as such are complete in view of the factual situation to be established and do not contradict each other or the other documents filed in this regard, in particular D5 and D6, the other objections of the [patent proprietor] with respect to the proof of the PPU are irrelevant.

[4.7.1] The objection that, starting from D5 and D6, gaps in the disclosure made it unclear how the CIP plant and the UHT installation were constructed, how they interacted in the cleaning of the UHT installation and which process steps a cleaning process for the UHT implemented in the allegedly used CIP plant has comprised, cannot be accepted.

As the PPU has been proven by the two witness testimonies, further documents or pieces of evidence, such as the “written pieces of evidence” D5 and D6 mentioned in the impugned decision, are not relevant.

This holds true at least for the present case wherein there are no fundamental contradictions between the pieces of evidence such as the two witness testimonies, and further documents, such as D5 and D6, which would diminish the evidentiary power (Aussagekraft) of some or all of the pieces of evidence so that they cannot be taken into account, either partly or completely, when evidence is assessed within the framework of the free evaluation of evidence.

However, the [patent proprietor] has not been able to demonstrate the existence of such gaps of disclosure or contradictions. […]

[4.7.2] The [patent proprietor] also expressed the opinion that, given his unlimited access to the pieces of evidence concerning the alleged PPU, the [opponent] could have been expected to provide further written pieces of evidence concerning the construction of the plant that had been delivered and, therefore, the cleaning process carried out with it. In this context, he also criticized that there had not been any documents representing the whole construction of the CIP plant and the UHT installation or from which the whole operating sequence of the cleaning process was discernable.

The Board is of the opinion that this request for further pieces of evidence concerns aspects of establishment of proof by the [opponent] which go beyond what the [opponent] had to supply in order to bear his burden of proof.

As the OD, acting within the framework of free evaluation of evidence, has come to the conclusion – which the Board considers to be correct – that the alleged PPU has been essentially established by the two witness testimonies, and as the [patent proprietor] has not been able to cast into doubt the probative value of these witness testimonies, there was no motivation for the opponent to file further pieces of evidence, neither in the opposition nor in the appeal proceedings.

Finally the appeal was dismissed.

To download the whole decision (in German), click here.

The file wrapper can be found here.

T 2210/10 – Swedish Post

2012-01-10T02:01:00.007+01:00

The opponent filed an appeal against the decision to maintain the patent in amended form.

The decision was posted on August 10, 2010 with an advice of delivery. On the address label the addressee was mentioned in the following way : Name of the representative, name of its office, address.

According to the advice of delivery received at the EPO on August 19, the decision was received at the representative’s office on August 17. The advice of delivery had been signed by an employee of the this office.

The acknowledgement of receipt (EPO Form 2936) was received at the EPO on 3 September 2010. It bears the signature of the representative and the date of 3 September 2010.

The opponent filed a notice of appeal on 3 November 2010 and a statement setting out the grounds of appeal on 3 January 2011.

The Board informed the appellant that it was to be expected that the appeal would be rejected as inadmissible pursuant to A 108, first sentence, in conjunction with R 101(1).

The representative further referred to two articles of the Swedish Code of Judicial Procedure Chapter 33 which read as follows in their English translation:

“If service is to be done to a single person, the document is handed over to him. If there is a substitute for him and if this person is authorized to represent him in the proceedings of the case the document is handed over to him.

If a single person is sought for service on his place for employment but is not to be met there during his normal working time, the document may be handed over to the employer of the sought person. By employer is meant a person in an executive position or in a position comparable with this or the manager of the human resource administrative department on the workplace of the person sought”.

He argued that because on the address label of the mail containing the decision the name of the representative appeared in the first line and the name of the representative’s office only in the second line, the mail had to be considered as addressed to the representative in person and not to the representative’s office. Therefore the employee having accepted the mail acted in breach of its authorisation to do so, since the employee was only authorised to accept mail for the representative’s office. Likewise the Swedish post office should not have handed out the decision to the said employee because under Swedish law such mail should be handed out to the person named on the mail only, or to a person authorised to accept mail in the name of this very person. Hence, the decision had to be considered as delivered to a non-authorised person. The date of notification to be taken as the starting day for the calculation of the time limit had therefore to be the date on which the representative became aware of the decision upon returning from holiday. This was 3 September 2011 as indicated on form 2936 sent back to the office on that very day.

You might have guessed that the Board did not endorse these arguments. Here are the reasons why:

[1] In the case under consideration the decision of the Opposition Division was notified by registered mail with an advice of delivery pursuant to R 126(1) on 10 August 2010. As a representative was designated, the decision was sent to him (R 130(1)) and, according to the advice of delivery, received at his office on 17 August 2010.

Undisputedly the decision was accepted there by an employee of the representative who was authorised to accept all mail delivered to the representative’s office.

Thus, the decision was notified within ten days following its posting, so that the fiction of R 126(2) applies for the calculation of the starting day of the time limit and the decision is deemed to have been notified on 20 August 2010.

Hence, the time limit for filing a notice of appeal ended on Wednesday 20 October 2010 and the time limit for filing a statement setting out the grounds of appeal ended on Monday 20 December 2010, respectively.

The appellant, however, filed a notice of appeal on 3 November 2010 and a statement setting out the grounds of appeal on 3 January 2011, respectively. Both dates are late, i.e. after expiry of the corresponding time limits.

[2] The appellant submitted that because the name of the representative appeared first on the address label of the mail, the decision could only be considered notified when the representative himself took knowledge of the decision.

The Board cannot accept this argument. Pursuant to R 130 the decision was addressed to the representative at his office. For organisational reasons, it is clear that in the representative’s office, one or several employees are entitled to accept mail addressed to the representatives working there. The employee who took over the impugned decision had an authorisation to do so in the name of the representative’s office. This is not disputed by the appellant. What happened there is no longer as much the responsibility of the EPO, but rather that of the representative (see T 743/05 [1.6] ; T 1535/10 [1.5.2]).

In addition, unless otherwise provided for, if an employee has an authorisation to accept over mail for the representative’s office this means that the employee has a right to take in mail for any one of the representatives working there, at least as long as the representative’s office name is on the address label. Any other interpretation would not make any sense. As a matter of fact in any of a granting, opposition or appeal procedure, when a representative is designated, this is in general a single natural person (representative) of a bigger law firm with a certain number of representatives. If the representative in the present case were right in his assumption, this would mean that the mail sent by the EPO would never be notified until the particular representative was informed of it. This would lead to inextricable difficulties for determining the date of notification, and the representative could pick and choose at will the day on which it would like the notification to have taken place.

[3] The appellant further submitted that in Sweden, where notification by post is concerned, it makes a difference whether on the address label the name of the representative is mentioned first and the name of the representative’s office second, or vice-versa. In the first case, the mail must be delivered to the very person named and in the second case it can be delivered to its office. In the present case this would mean that the decision was delivered to a person not authorised to accept it.

Pursuant to R 126(2) last part of the only sentence, “in the event of any dispute, it shall be incumbent on the EPO to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee, as the case may be.”

In the opinion of the Board, this, however, cannot mean that it is the duty of the EPO to start enquiries as soon as a party, against the evidence on file, considers that the mail has not been properly notified.

The EPO, and the Boards of appeal in particular, cannot be expected to undertake exhaustive investigations to establish on their own the date of notification in the absence of serious doubts. This would de facto amount to allowing any party to request the EPO to prove that notification has duly been effected whenever the party feels it advantageous to do so. This cannot be the aim of this rule.

In the present case, the Board considers that no serious doubts exist. Once again, the advice of delivery has been returned to the EPO in due time, the date of reception of the mail is duly indicated (17 August 2010) on the advice of delivery and the employee who accepted the mail was indisputably authorised to accept mail for the representative’s office.

In such a case, if the representative still considers that notification has not been correctly effected it is up to him to bring convincing evidence as to the contrary.

But the appellant did not file any convincing evidence to back up its allegations. In its letter of 22 March 2011, it mentioned two articles of the “Swedish Code of Judicial Procedure Chapter 33”, which according to it would require that “If service is to be done to a single person, the document is handed over to him.”.

In the absence of any argument in this respect from the appellant’s side, the Board fails to see why the Swedish Code of Judicial Procedure would have any relevance when it comes to deciding to whom a registered letter of an administrative body should be delivered by the postal services.

It is further to be noted that case T 743/05 also concerned a Swedish representative, that the name of the representative and the representative’s office name and address were in the same format as in the present case, and that this issue did not play any role. This casts further doubts as to the relevance of the representative’s argument.

Moreover, if the two articles of the Swedish Code of Judicial Procedure cited by the appellant were applicable, they do not make any reference to a difference of treatment between pieces of mail having either the name of the person or the name of the person’s place of employment cited first on the address label. In other words even if they were applicable to registered letters of an administrative body, the cited articles fail to deal with the present situation.

Hence, in the present case, on the basis of the filed evidence, the Board cannot see any difference, when it comes to notification, between an address label with either the name of the representative or the name of his office in the first position, as in both cases the name of the representative’s office is on the label.

[4] The appellant further submitted that the date of notification to be considered should be the date indicated by him on the EPO Form 2936, namely the 3 September 2011.

This form was introduced by the EPO in order to facilitate the establishment of the date of notification in cases in which the advice of delivery is either not returned to the EPO or is returned but without being completed at the receiving end (see Notice of the European Patent Office dated 10 June 2010 in Official Journal EPO 7/2010, page 377).

In the present case the advice of delivery was duly completed and returned to the EPO, so that the date on Form 2936 is of no importance.

[5] Hence, pursuant to R 101(1) in combination with A 106 to A 108, the appeal must be considered inadmissible.

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

The file wrapper can be found here.

T 848/09 – Not Frozen

2012-01-09T02:01:00.002+01:00

The manner in which Article 12(4) RPBA is applied by the Boards is a matter of concern for many patent attorneys. Here is another interesting case, where Board 3.5.03 had to deal with an appeal against the decision of the Opposition Division (OD) to revoke the opposed patent.

In its response to the summons to attend oral proceedings (OPs), the patent proprietor filed amended main and auxiliary requests. Obviously, the question of admissibility arose.

Here is what the Board had to say on the admissibility of the main request.

[1] In accordance with Article 12(4) RPBA, the board has the discretion “to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings”.

The [opponent] argued that the main request should not be admitted as it was not submitted during opposition proceedings, despite the fact that the patent proprietor had been asked by the chairman of the OD whether it wished to file “an auxiliary request” […]. The [opponent] also argued that appeal proceedings concerned a judicial procedure whose primary purpose was to determine the correctness of the decision taken by the OD. The [opponent] referred to decisions T 379/09, T 144/09 and T 240/04 to provide support for its view.

The board concurs with the [opponent] that the primary purpose of the appeal procedure is to check the correctness of the decision of the department of first instance. It is also established case law that the parties should not in general be able to change the factual and legal framework of the case during the appeal phase; however, this does not mean their procedural situation becomes frozen following the decision from the department of first instance. In accordance with Article 12(4) RPBA, amendments are possible, provided that these amendments are justified by the normal development of the proceedings. Amendments may for instance be justifiable having regard to the principle of procedural economy (which is not the main justification here, but at least there is no conflict since no delay to the proceedings has ensued), or, as is the case here, be a normal reaction of a party given the circumstances of the case.

In the cases cited by the [opponent] where the new requests were not admitted under Article 12(4) RPBA, the circumstances were different, namely:

• In T 379/09, the patent proprietor filed the new request aimed at overcoming an objection raised by the OD only one month before the OPs before the board of the appeal although the nature of the objection had been set out in the summons to OPs issued by the OD. Furthermore, admitting the request would have caused a considerable delay of the procedure.

• In T 144/09 [1.14], the proprietor had made a “considered and deliberate choice” not to file an amended request, despite being given the opportunity to do so after the objection had been explained.

• In T 240/04 [16], the new request introduced subject-matter which had not been considered by the first instance and, above all, diverged from what had been discussed before; instead of convergence there was a jump to another invention.

By contrast, in the present case the board considers the filing of the present main request to be a legitimate and normal reaction to the decision to revoke the patent, because the amendment concerns the addition of a feature of a dependent claim which further limits the subject-matter distinguishing the invention with respect to the disclosure of document D3. As the added feature was previously in a dependent claim, it can be assumed that the claimed subject-matter has been searched. Moreover, the request was filed at the earliest possible stage of the appeal proceedings, namely with the statement of grounds. The filing of this request therefore did not give rise to any procedural complications preventing a discussion of the request at the OPs. Even if, theoretically, the patent proprietor might have been able to file this request at the end of the OPs before the OD, the board sees a difference with the other cited cases above, in particular with T 144/09, since it does not appear that the patent proprietor made a “considered and deliberate choice” not to file the request. Rather, the reasons for the revocation of the patent were not so explicitly known as in case T 144/09 and plausibly the formulation of a suitable new request overcoming the objection was not immediately evident. In such circumstances it would be unreasonable to penalise the non-filing of an auxiliary request at the end of OPs by later invoking Article 12(4) RPBA in appeal proceedings.

The board therefore decided to exercise it discretion to admit the main request.

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

The file wrapper can be found here.

T 1086/07 – Presenting Information

2012-01-07T20:01:00.002+01:00

This appeal was against the decision of the Examining Division (ED) to refuse the European patent application under consideration, which concerned the problem of indicating on a summary document where the summarised portions came from in the original document.

The ED found that the subject-matter of claim 1 did not involve an inventive step.

Claim 1 of the sole request before the Board read:

A method for summarizing a document using a processor (12), the method comprising:
extracting (S200) text from the document along with corresponding location information;
identifying (S220) portions (82) of the extracted text that reflect the content of the document;
generating (S230) a presentation file that includes the identified portions (82) and a first set of indicators (84) that identify each identified portion of text, the first set of indicators being placed adjacent to the corresponding extracted text; and
presenting (S270) the presentation file, characterized by generating a second set of indicators (86) that correspond to the first set of indicators, the vertical positions of the second set of indicators (86) indicating the vertical locations of the corresponding extracted text in the document.

[4] The ED started from the method of automatically mapping a document abstract to its original sentences disclosed in D1. The subject-matter of claim 1 differed from this by the generation of the second set of indicators to indicate the “vertical locations” of the original text. The objective problem was seen as how to improve navigation between the document summary and the summarised document. The ED considered that the skilled person would try to solve this by providing more navigation information about the summarised document. Such data was already present in D1 in the form of the corresponding area table 410 in Figure 13,

the sentence score table 408, revealing the sentence length, in Figure 8

and the abstract sentence table 409, showing which original sentence corresponds to which abstracted sentence, in Figure 9.

The ED considered that the skilled person would “use this data and visualize it according to user requirements, the form of presentation of this information being only a mere choice for the skilled person”.

[5] The Board agrees with the appellant that the ED’s reasoning is rather terse, in particular the motivation to modify D1 to arrive at the invention. If the features in question were all of a technical nature, the Board might have some doubts about the conclusion of this argument. However, as the ED did acknowledge, albeit only at point 4.3 of the minutes, the “pure visualization of available information” cannot contribute to inventive step. In the Board’s view this consideration is decisive to the outcome of the present case.

[6] Moreover, the Board finds the ED’s statement of the distinguishing features slightly too generous. In the Board’s view, the sentence numbers (B2, B5, B7) shown in Figure 9 of D1 can be considered to be a second set of indicators that correspond to the first set of indicators (A1, A2, A3…), and indicate the vertical locations of the extracted text. Thus, strictly speaking the invention differs only in that these second indicators are displayed and that their vertical positions indicate the vertical locations of the text instead of using them to look up and display automatically the text.

[7] The Board considers that, in general, the idea of displaying and placing an indicator at a position to identify a location has no technical character. It is a presentation of information, namely the results of the summarising process, and has no interaction with the possibly technical function of producing it.

A similar conclusion was reached in decision T 603/89 [2.1(c)/(d), 2.6] in connection with a kind of template that displayed numbers on a card to represent notes on a keyboard instrument. Although the jurisprudence on A 52(2) was somewhat different at the time, the judgement of technical character was essentially the same. Thus, in the Board’s view the idea of this distinguishing feature cannot contribute to inventive step. As the ED stated, the skilled person would be able to implement some form of indicator based on the sentence number, and the claim gives no details of the implementation of these indicators that could contribute to inventive step either.

[8] Concerning the appellant’s absolute position argument, the Board considers that the claimed term “vertical locations” is not precise enough to define a position that is any more absolute than the sentence numbers in D1, in particular considering that the user must anyway make the connection between the indicator and the actual text. Since the claim does not define how the invention deals with non-text passages, this argument cannot be used to distinguish over D1.

[9] In the Board’s view the same conclusion can be reached starting from the general desire to refer to original sentences while reading the abstracts disclosed in the opening part of D1 at column 1, lines 23 to 26. The invention differs from this by identifying the extracted portions and providing the corresponding second indicators. Again these differences would be aspects of presentation of information having no technical character.

[10] Finally, even if the features were considered to have technical character, the Board cannot see how they could involve an inventive step. The claimed portions of extracted text and first indicators essentially cover the contents page of a document or book. The second indicators cover the use of sticky tabs that indicate the position in the book of relevant passages. In the Board’s view the skilled person would consider the idea of using such tabs on the contents page as an obvious possibility for keeping track of the original text using the contents page alone.

[11] Accordingly, the subject-matter of claim 1 does not involve an inventive step (A 56 EPC 1973), so that the appeal must be dismissed.

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

The file wrapper can be found here.

Publish Or Perish (ctd.)

2012-01-07T20:00:00.013+01:00

At the end of each quarter, I have a look at the number of decisions that DG3 has published on its website. This year I found what I had expected: in 2011, the EPO has published significantly less decisions than in the years before. It is the small number of decisions published in quarter 2 that made the difference; this might correspond to a small number of decisions taken in quarter 1. As a matter of fact, the numbers of decisions published during quarters 3 and 4 hardly differ over the years (quarter 3 of 2009 being a notable exception).

As a consequence of the reduced production, I almost had to stop posting on two occasions during the year, and my reservoir is empty so to speak. Obviously, life is easier for case law bloggers when decisions abound.

Bets are open as to what 2012 will bring. It would be great if the DG3 website came back to normal, after a troublesome year.

T 456/10 – See The Big Picture

2012-01-06T02:01:00.002+01:00

A reminder on how (not) to interpret drawings …

The patent proprietor filed an appeal against the decision of the Opposition Division (OD) to revoke the opposed patent.

Claim 1 as granted read:

Eccentric screw pump having an inner casing (2) made from wear-resistant and resilient material in a single-part or multi-part cylindrical housing casing (1); wherein an inner surface (3) of the casing (2) or the inner casing (2) is designed spirally with predetermined pitch direction and pitch length on its side (3) pointing inwards; having a helical or spiral rotor (6, 8) inserted with pretension in the casing in a first axial position (z1) and with radial eccentricity (9) and mounted (15, 16) on the drive side in this position and having the same pitch direction (7) as the stator (2); characterised in that an outlet opening (5) of the stator (2) is expanded starting from its end-face end on a piece of the axial conveying length radially outwards on its entire periphery so that an end-face edge (24), which rotates in pump operation, of the rotor end (23) placed close to the outlet opening - preferably for wear-related axial displacement (19; Δz) of the rotor - can be rotated in contact-free or released (G) manner with respect to the inner surface (3) of the stator.

The OD had found claim 1 as granted to lack novelty over document D0 and in particular over figure 1 of this document.

The Board disagreed:

*** Translation of the German original ***

[2.1.1] Document D0 concerns a stator for eccentric screw pumps the inner coating 2 of which can be readily and simply replaced […]. This result is obtained by means of a coating that is manufactured separately and which is used together with a casing (Mantel) that is divided lengthwise and the parts of which can be connected with each other in a non-permanent (lösbar) way […].

[2.1.2] Figure 1 shows a partial longitudinal section of the eccentric screw pump.

One can discern a gap on the left end-face, between the lower part of the rotor 4 and the coating 2 of the stator. Therefore, at the lower part of this end-face also, the rotor 4 is not in contact with the inner surface of the coating 2. However, one can see from figure 2 that the lower part of this end of the rotor 4 is in contact with the inner surface of the coating 2, i.e. that there is no gap.

[2.1.3] It clearly follows from page 1, lines 60-75 of the description that all figures show one and the same eccentric screw pump. Therefore, figure 2 is a front view of the stator according to figure 1 and should, therefore, show what the skilled person sees in figure 1 when looking at the pump from the left hand side. As figures 1 and 2 are intended to show the same eccentric screw pump but diverge in view of the above mentioned gap, the Board notes that the figures contradict each other in this respect.

[2.2] According to the established case law of the Boards of appeal, the technical disclosure of a document that forms part of the state of the art has to be considered as a whole (see T 56/87). The individual sections of a document must not be considered separately from the other parts but have to be seen in the overall context (see T 312/94).

[2.2.1] For this reason alone figure 1 cannot be used (gewürdigt) in isolation from the remainder of the document and in particular from figure 2.

[2.2.2] The fact that figures 1 and 2 show the same eccentric screw pump also hinders [the skilled person from using figure 1 in isolation] . In case the skilled person would try to find out which drawing is correct, he would not find any information in the description simply because the gap is not mentioned there. This is not surprising because the gap has nothing to do with the above mentioned purpose (see [2.1.1]).

[2.2.3] Therefore, the characterising feature of claim 1 – i.e. that a gap has to be provided on the left end-face, between the lower part of the rotor 4 and the stator 1,2, such that the lower part of the rotor 4 is not in contact with the inner surface of the coating 2 – does not follow unambiguously, for the skilled person, from the overall context of document D0 (see T 153/85 [headnote 3]).

[2.3] According to the established case law of the Boards of appeal, a document forming part of the state of the art is novelty destroying only if the subject-matter of the invention is disclosed in it directly and unambiguously (see e.g. T 511/92).

As the overall context of document D0 does not allow the skilled person to understand without doubt which of the two figures is correct, the distinguishing feature cannot be considered to be unambiguously disclosed.

Therefore, the subject-matter of claim 1 is novel within the meaning of A 54(1)(2) EPC 1973 over the disclosure of document D0.

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

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T 1022/09 – What’s In Is In

2012-01-05T02:01:00.003+01:00

If the opposition filed by one of the opponents is found not to be admissible, are the documents filed by him (alone) still in the proceedings? That is the question the Board had to answer in the present case.

The patent (directed at a process for packaging wine in aluminium cans) was opposed by nine opponents. Opponent 5 had his principal place of business in Argentina and filed his opposition via a professional representative. This representative subsequently withdrew, without another representative being appointed, even after the EPO had requested the opponent to do so ; this resulted in the opposition being deemed inadmissible.

All the oppositions were rejected by the Opposition Division (OD).

In the following passage, the Board deals with the admissibility of several documents:

[2.1] The [patent proprietor] argued that a number of documents filed in the opposition proceedings, as well as documents filed during the appeal proceedings were not admissible into the proceedings.

[2.2] D18, D28, D43, D52, D53 and D59 were each filed with a corresponding notice of opposition. In each case the filing of the document was substantiated by the document being discussed in detail with respect to at least one ground of opposition.

The OD considered that these documents were not part of the opposition proceedings for one or more of the following reasons: it was not proven that they were publicly available; their publication was not proven; their dates of publication were not proven to have been before the date of priority; or they were filed by opponent 5 whose opposition the OD retrospectively considered to have been inadmissible.

[2.2.1] In the view of the Board the question of whether the publication date or content of the respective document makes them relevant to the discussion of the grounds of opposition is a separate consideration to that of admissibility when the document is filed with an admissible notice of opposition and its alleged significance is discussed in that notice. In this respect the OD has confused the criteria for admissibility of late-filed documents with those for documents filed with and referred to in an admissible notice of opposition. In the latter case the content and publication date does not come into play for the question of admissibility.

[2.2.2] With respect to the documents filed by opponent 5 along with its notice of opposition the Board notes that at least at the time of filing the opposition the documents were automatically in the opposition proceedings as they were also referred to in that notice of opposition. The OD decided that the subsequent withdrawal of representation by the professional representative meant that the opposition was deemed inadmissible.

[… T]he Board does not consider it necessary to reach a conclusion on the admissibility of this opposition. With regard to the documents filed along with the notice of opposition the Board considers that since their filing was substantiated they were automatically in the opposition proceedings. This fact cannot be changed retrospectively by the subsequent withdrawal of representation by the professional representative.

[2.2.3] In the view of the Board all of these documents filed in the first instance proceedings are therefore in the proceedings.

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T 2339/09 – Balance Act

2012-01-04T02:01:00.004+01:00

The applicant filed an appeal after the Examining Division had rejected the application under consideration. The Board discussed the question whether Internet document D4 was publicly available.

*** Translation of the German original ***

[2] The way in which the EPO deals with citations of Internet documents is explained in a communication of the EPO (OJ EPO, 8-9 2009, p. 456-462) and in decision T 1134/06.

Disclosures made on the Internet are deemed to have been accessible as from the date on which they are published online. As a rule, it is necessary to assess whether the documents form part of the state of the art by considering the balance of probabilities (nach Abwägen der Wahrscheinlichkeit). Product catalogues or product lists of companies such as D4 are, in general, directed at potential clients and, therefore, intended for publication.

According to the search report, D4 is an Internet article dated May 22, 2006, which was found on March 21 in the Internet archive www.archive.org and which concerns a product catalogue of the HBE company. The date of the online publication of this product catalogue, therefore, is May 22, 2006, which is before the filing date of the present application, i.e. November 17, 2006. Moreover, the catalogue is marked “11.10.04”, which even refers to an earlier date of publication of this catalogue. In any case the relevant dates are before the date of filing, which makes it necessary to consider that D4 forms part of the state of the art.

It is the [applicant] who bears the burden of proof for the assertion to the contrary, i.e. that D4 has not been published before the date of filing. In this context, he has argued that when the search engine www.archiv.org is used, D4 was found with a publication date of January 7, 2007, i.e. after the filing date. However, no evidence was provided. Moreover, the name of the search engine is not identical to that of the search report and the time at which the request was made is unknown, but it may be expected to be well after the date of the search report. Therefore, the submissions of the appellant are neither sufficient nor suitable for invalidating the assumption that D4 forms part of the state of the art.

I am not sure whether this decision is really in line with T 1134/06 (approved in T 1875/06 [9]) where it was stated that “ … the fact that an Internet disclosure is state of the art under A 54(2) should be proved “beyond any reasonable doubt”.” If my understanding (and translation) is correct, this decision rather applies the standard of “balance of probabilities”. Patent attorneys should note both decisions, so that they can use whatever suits the situation they have to face.

To download the whole decision (in German), click here.

The file wrapper can be found here.

T 1841/09 – A Dubious Combination

2012-01-03T02:01:00.007+01:00

In this case the opponent appealed against the decision of the Opposition Division (OD) to reject the opposition.

Claim 1 of the patent as granted read:

1. An amine dispersant containing one or more amino and/or imino groups, a poly(oxy-C1-6-alkylene carbonyl) chain (POAC chain) obtainable from two or more different linear hydroxycarboxylic acids or lactones thereof and a residue of an ethylenically unsaturated group wherein the amino and/or imino group is attached via the ethylenically unsaturated group, including salts thereof.

According to the opponent, the subject-matter of granted claim 1 differed in only one feature from each of examples 14 and 16 of document D1: the alkyl rest of the second acids or lactones thereof used to prepare the POAC chain should be

linear and not branched as in example 14,
a C1-6 alkylene and not C18 as in example 16.

The substitution of the differing feature by one mentioned in the list of equivalent alternatives given in the description of D1 automatically resulted in the claimed subject-matter. According to T 332/87 and other decisions, it was not necessary for a document explicitly to mention a claimed combination to be novelty destroying. Therefore D1 took away the novelty of the claimed subject-matter. Nor could the claimed subject-matter be regarded as a selection invention since the features replacing the ones in examples 14 and 16 were explicitly disclosed in D1 and were chosen from only one list of alternative possibilities. Reference was made to the Guidelines, C-IV 9.8.

The Board did not agree:

Modification of examples 14 or 16 of D1

[2.1.1] D1 discloses dispersants comprising amino groups and a poly(oxy-alkylene carbonyl) chain wherein the amino groups are attached to said chain via the residue of an ethylenically unsaturated group […].

[2.1.2] Example 14 of D1 discloses the preparation of a dispersant obtained by reacting a polyethyleneimine having a molecular weight of 10,000 (SP200, manufactured by Nihon Shokubai Kagaku Co. Ltd.) and a polyester prepared from epsilon-caprolactone and 4-methylcaprolactone according to Preparation Example 5. The dispersant thus obtained comprises a POAC chain obtained from two different lactones of C1-6 hydroxycarboxylic acids, the one derived from 4-methylcaprolactone being non-linear.

Example 16 of D1 discloses the preparation of a dispersant obtained by reacting polyethyleneimine SP200 and a polyester prepared from epsilon-caprolactone and 12-hydroxy-stearic acid according to Preparation Example 7. The dispersant thus obtained comprises a POAC chain obtained from a lactone of a C1-6 hydroxycarboxylic acid and from a C18 linear hydroxycarboxylic acid, which is not a poly(oxy-C1-6-alkylene carbonyl) chain as required by claim 1 of the patent in suit.

Hence, neither example 14 nor example 16 of D1 discloses a dispersant according to claim 1 of the patent in suit.

[2.1.3] D1 […] further describes a list of lactones that may be also employed in the addition reaction used to prepare the POAC chain in example 14, said list including lactones of linear C1-6 hydroxycarboxylic acids (e.g. (-caprolactone, (-valerolactone, (-propiolactone, (-butyrolactone) or of branched C1-6 hydroxycarboxylic acids (e.g. (-methyl-(-valerolactone, 4-methylcaprolactone, 2-methylcaprolactone).

A similar list is given [… in] D1 regarding the lactone compounds that may be employed in the addition reaction used in example 16. Besides, according to [D1], the hydroxycarboxylic acid suitably used in example 16 may be chosen from a list of several alternatives comprising compounds having a linear C1-6 rest (e.g. (-hydroxyvaleric acid, (-hydroxy caproic acid, lactic acid, glycolic acid), a branched C1-6 rest (e.g. 2-2-dimethylolpropionic acid) or a linear rest falling outside the requirement of C1-6 for the POAC chain recited in claim 1 (e.g. 12-hydroxystearic acid, salicylic acid).

[2.1.4] There is however no disclosure in D1 to combine specifically example 14 with that part of [the description] directed to the specific lactones as defined in claim 1 of the patent in suit. In particular, D1 contains no motivation to substitute the 4-methylcaprolactone used in example 14, which is branched, by a linear hydroxycarboxylic acid or lactone thereof. There is also no hint in D1 to use a linear hydroxycarboxylic acid or lactone thereof as defined in present claim 1 in addition to the two monomers used in example 14. In this regard, it is noted that the addition of such a monomer would lead to a POAC obtained from three units, one of which not being according to claim 1 of the patent in suit, so that it would not be novelty destroying.

[2.1.5] D1 further does not contain any incentive to modify the particular process of example 14 by selecting two lactones according to present claim 1 as monomers for the preparation of the POAC out of the whole list given in D1, which also includes other lactones that are equally suitable.

[2.1.6] The same is valid for the substitution of the 12-hydroxy-stearic acid in example 16 by a linear hydroxycarboxylic acid or lactone thereof according to present claim 1 on the basis of the list of D1, page 7, lines 41-43 and/or lines 48-52.

Multiple selections within the ambit of D1

[2.2] The modification of a specific example (either example 14 or example 16) on the basis of a specific passage of the description of D1 […] in order to arrive at the subject-matter now being claimed amounts to a multiple combination of individual elements that has not been explicitly mentioned in D1. Indeed, one has, first, to choose a specific example among all those of D1, secondly, to choose to substitute either the 4-methylcaprolactone used in example 14 or the 12-hydroxy-stearic acid used in example 16, and thirdly, to choose a compound according to claim 1 of the patent in suit within the list of alternative hydroxycarboxylic acids and lactones recited in D1 which is not limited to those compounds […].

The same conclusion would be reached if one would consider e.g. claims 1 and 2 of D1, which both disclose dispersants comprising a POAC chain obtainable from hydroxycarboxylic acids or lactones thereof: here, one would have to choose to prepare a POAC chain from two compounds according to claim 1 of the patent in suit within the list of alternative compounds defined in either formula 1 (see in particular the definition of the R3 group) or in claim 2, which are not all according to the definition of claim 1 of the patent in suit. This modification would amount to at least two selections within a list of equivalent alternatives.

According to decision T 12/81 such a multiple selection confers novelty since it represents a combination of features that was not specifically disclosed in the prior art.

In decision T 332/87, novelty was denied considering the modification of an example illustrative of the invention with a general teaching disclosed in the description of the same prior art document concerning the mere optional addition of a filler applicable to any composition claimed, including those specified in the examples. T 332/87 describes, thus, a different situation from the present case, wherein the objection of lack of novelty raised was based on the modification of an example of a prior art document by selecting in the description of the same document a specific monomer among a list of alternative compounds, not all of which would lead to the subject-matter as claimed. Therefore the argument of the appellant based on T 332/87 […] can not be followed.

[2.3] For these reasons, the Board considers that D1 does not contain a direct and unambiguous disclosure which inevitably leads the skilled person to a dispersant as defined in claim 1 of the patent in suit. Hence, the subject-matter of claim 1 of the patent in suit is novel.

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T 1644/10 – You’re Late

2012-01-02T02:01:00.027+01:00

In this case the EPO had published the mention of the grant of the patent under consideration on November 22, 2006. The B1 specification was published on the same day. Claim 1 contained an error: the EPO had published an earlier version of the claim instead of the claim as granted! In response to a request by the patent proprietor, the Examining Division ordered the publication of a corrected (B9) specification on March 19, 2008.

The error concerned claim 1 in its German version, German being the language of the application as filed. Claim 1 of the B9 document was different from claim 1 of the B1 document in the following way (underlined parts correspond to additions, struck-through parts to deletions)

Filter device (1) for the separation of undissolved solid substances from liquids, in particular in the fields of waste water purification and water treatment, with several filter elements (6), for the introduction into a container (2) containing the unpurified liquid, wherein through the individual filter elements (6) a filtrate is capable of being drained away, the fitter elements are arranged so as to be capable of rotating around a horizontal axis, and the filter elements (6) are designed and arranged in such a manner, that they form a hollow space (4) in the centre, characterised in that the filter device (1 ) comprises a gassing installation (8), which is stationarily arranged in the hollow space (4) and which for the formation of a mixture of gas and liquid is capable of being impinged with compressed gas and which is arranged in such a manner, that in the liquid a flow of a mixture of gas and liquid is capable of being produced at the filter elements (6), such that this flow renders an adhesion of solid substances to the filter elements (6) more difficult, and in that the filter elements (6) are arranged to be rotatable around the gassing installation (8), wherein the gassing installation (8) comprises either a hollow shaft (9) with gas outlet openings, or at least one elongated hollow body (10) that is arranged parallel to a hollow shaft (9) ~~and closed on both ends,~~ or at least one elongated hollow body (10) arranged horizontally as well as orthogonally to a hollow shaft (9), and the at least one hollow body (10) is connected with a chamber (12) of the hollow shaft (9) through connecting pieces (11), wherein the chamber (12) is connected with a compressed gas generator (14).

NB: The English version was the same for the B1 and the B9 documents.

The “opponent” filed an opposition against the patent on December 18, 2008, i.e. almost nine months after the publication of the corrected specification.

The Opposition Division (OD) concluded that the opposition was deemed not to have been filed.

The opponent filed an appeal.

The Board confirmed the verdict of the OD and made some interesting statements on the principle of protection of legitimate expectations (PPL, sometimes also referred to as “principle of good faith”).

I have finally found the time to translate this interesting decision. Admittedly, it is quite lengthy but I find it very pedagogical and well worth reading. For those who are in a hurry, here is a translation of the

Headnotes

1. Pursuant to A 99(1) EPC 1973 the moment at which the time limit for filing an opposition begins to run only depends on [the fact] that a European patent has been granted and that the mention of the grant has been published in the European Patent Bulletin. It does not depend on [the fact] that the patent specification has been published (see point [6] of the reasons).

2. The mention of the publication of a corrigendum to the patent specification in the European Patent Bulletin does not trigger a first or a further time limit for filing an opposition, even if the corrected patent specification has a scope of protection that is broader than the scope of protection of the patent specification as originally published. (see point [11] of the reasons)

3. The application of the principle of protection of legitimate expectations to a failure to meet the time limit to file an opposition in inter partes proceedings is subject to a balance of interests. The patent proprietor’s legitimate expectations regarding the validity and legal force of the decision to grant are not, as a rule, subordinate to the opponent’s legitimate expectations regarding the correctness of the content of the patent specification as published. This would contradict the principle of equal procedural treatment of the parties. (see point [27] of the reasons).

NB: Unless otherwise specified, all legal provisions refer to the EPC 1973.

*** Translation of the German original ***

[1] The appeal fulfils the requirements of A 106 to A 108 and R 99 EPC (2000) and is, therefore, admissible.

The name of the company of the opponent and appellant was to be corrected to “Huber SE” ex officio. It follows from the extract of the commercial register (Handelsregisterauszug) that “Hans Huber AG Maschinen- und Anlagenbau” has changed its legal form to become “Huber SE”. According to German law, such a change of legal form only concerns the legal form as such but not the legal personality. In application of the legal fiction provided in § 202 (1) of the German Transformation Act (Umwandlungsgesetz) the legal identity of the company undergoing the change is conserved. Therefore, the change of company to be taken into account ex officio at any time.

[2] The appeal cannot be allowed. The reasons set out in the impugned decision, according to which the opposition was filed belatedly are not objectionable, as will be explained in what follows.

Provisions to be applied (EPC 1973 vs. EPC 2000)

[3] As the application under consideration was filed on December 2, 2003, the question arises as to which provisions have to be applied after the entry into force of the EPC 2000. Here the following applies: procedural acts that were legally effective for the proceedings (verfahrensgestaltend schon rechtswirksam) and completed (e.g. the time limit for filing an opposition (TFO)) before the entry into force of the EPC 2000 on December 13, 2007, are to be decided on the basis of the old law (J 10/07 [1]; T 1172/04 [1], tempus regit actum). The new provisions are to be applied to factual situations that were not yet completed at that time, provided that they are mentioned in Article 1, n° 1, first and second sentences of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the EPC of 29 November 2000 (OJ EPO, Special edition 1/2007, 197). The Board is of the opinion that the provisions cited hereinafter do not differ depending on whether the old or the new law are considered, even though there may have been numerical or linguistic adaptations in particular cases. Therefore, the Board does not consider it to be necessary to explain in detail the legal situation for each individual provision. As a result, only the provisions of the EPC 1973 are applied.

Computation of the beginning and the end of the TFO

[4] In agreement with the parties the Board of appeal bases its considerations on the following factual situation: The wording of claim 1 according to the decision to grant a patent of October 26, 2006, comprised three parallel alternatives A, B, and C, whereas the wording of claim 1 of the patent specification in the relevant German version only contained the alternatives A and B but not alternative C.

The opponent invokes the fact that its opposition was “only” directed against alternative C and that the 9-month TFO related to this subject-matter was only triggered by the publication of the B9 document. According to A 99(1), an opposition to a patent has to be filed within nine months from the publication of the mention of the grant of the European patent. In the present case, however, no mention of the grant of the European patent on which the decision to grant was based had been published because the patent specification B1 was incorrect.

Therefore, the Board of appeal has dealt with the legal question whether and how the publication of the patent specification can determine the moment in time when the TFO starts and whether the publication of the B9 document having a broader scope of protection than the B1 document can trigger a new TFO, which might be limited to the subject-matter of alternative C.

[5] Whether an opposition has been filed in due time depends on when the TFO begins, because this moment also determines the end of the nine-month TFO, as well as on the payment of the opposition fee.

According to A 99(1), which was in force when the opposition was filed, an opposition against a European patent has to be filed within nine months from the publication of the mention of the grant in the European Patent Bulletin (EPB) (A 99(1), first sentence); it shall not be deemed to have been filed until the opposition fee has been paid (A 99(1), second sentence).

[6] In the present case the mention of the grant of the European patent had been published in the EPB 06/47 on November 22, 2006. Therefore, the nine-month TFO ended on August 22, 2007. As a consequence, the opposition filed on December 18, 2008, was not filed in due time and is deemed not to have been filed, also because the opposition fee was paid by debit order only on this date. (As far as the requirement for the payment of the opposition fee within the TFO is concerned, see T 152/85 [1])

According to the wording of A 99(1), the TFO is triggered exclusively by the fact that a European patent has been granted and a mention of the grant has been published in the EPB, and not by the fact that a patent specification has been published.

No legal effect of the publication of the specification

[7] The appellant has not contested that in the present case the decision to grant a patent concerned embodiment C in claim 1 and that the mention of the grant of the patent was published in the EPB on November 22, 2006.

Regarding its content, the mention complied with the requirements pursuant to A 97(4). The opinion of the appellant according to which the mention was deficient to the extent that the patent specification B1 was deficient contradicts the wording of the provision which only refers to the procedural fact of the grant of the patent but not to the patent specification. The publication of the mention of the grant of the patent in the EPB on November 22, 2006, was complete and correct with respect to its content, as also admitted by the appellant and, therefore, was not affected by any of the deficiencies of the publication that were considered in decision J 14/87 [11].

[8] Considering that the publication of the European patent specification is not relevant for the computation of the time limit pursuant to A 99(1), this also holds true for the publication of a subsequent correction of the patent specification (cf. T 438/87 [4.1])

It also follows from the legal systematics of A 98 and A 99 that the wording of the patent specification as published has no legal effect even when its contents differ from the decision to grant a patent.

A 98 only provides:

“At the same time as it publishes the mention of the grant of the European patent, the EPO shall publish a specification of the European patent containing the description, the claims and any drawings”.

The fact that the lawmaker in the next article, i.e. A 99(1), nevertheless makes the beginning of the time limit depend on the day of the publication of the mention of the grant of the patent in the EPB only and does not refer to the actual publication of the patent specification makes it obvious that the TFO shall not depend on the public availability of the patent specification. Therefore, from a legal point of view, it is irrelevant for the beginning of the TFO whether the scope of protection defined in the patent specification is smaller than the scope of protection as defined in the decision to grant a patent or whether it exceeds it.

Systematics of A 64(1), A 97(4), and A 99(1)

[9] The arrangement of A 99(1) also serves legal security. As the EPB is published routinely at a date that is known in advance, the date of the publication of the mention of the grant of the patent is determined unambiguously and in a way that can be reproduced at any later moment, whereas the actual publication of the patent specification can be uncertain because the law does not establish any duty of documentation. However, the moment when a European patent becomes effective has to be understandable (nachvollziehbar) in a simple and safe way in view of the national patent rights which arise from it. Thus A 64(1) provides that a European patent shall, (subject to the provisions of paragraph 2) confer on its proprietor from the date of publication of the mention of its grant, in each Contracting State in respect of which it is granted, the same rights as would be conferred by a national patent granted in that State. Clearly the law has not added an additional requirement according to which the patent specification has to be published and must be correct as to its content for the patent to be effective.

It is not accidental that the moment at which the European patent becomes effective in the Contracting States pursuant to A 64 coincides with the moment at which the mention is published in the EPB pursuant to A 97(4) and the moment at which the TFO begins to run pursuant to A 99(1) but it serves the legal security the lawmaker intended. In this context it has to be noted that the grant proceedings are ex parte proceedings and would be factually terminated when the decision to grant a patent is sent (notified) to the applicant. However, notwithstanding these procedural principles the legal effectiveness of the decision to grant a patent is shifted pursuant to A 97(4) to the moment at which the mention of the grant of the patent is published in the EPB for the sake of legal security so that the European patent right arises at the same time as the national rights granted pursuant to A 64. These provisions do not establish that it is necessary to send the patent specification to the applicant or [make it available to] the public in order for the decision to grant a patent to become legally effective, and this would indeed be completely alien to the proceedings.

For these reasons also it has to be noted that the moment at which the patent specification is made available has no influence on the beginning of the TFO. This corresponds to the wording of A 99(1) according to which the opposition has to be filed “within nine months from the publication of the mention of the grant of the European patent”. Thus the lawmaker has expressly associated the beginning of the TFO with the moment at which the European patent becomes effective and at which national rights arise.

Confirmation of Legal Advice n° 17/90

[10] The Board of appeal considers Legal Advice n° 17/90, which has been published by the EPO (OJ EPO 1990, 260) but which is not binding on the Board to be correct in view of the legal situation under consideration.

The Board does not share the opinion of the appellant according to which the meaning of the term “misprints” used in point 1 of the Legal Advice is limited to mistakes created in the printing process. The Legal Advice defines this term as a divergence from the text on which the decision to grant was based, owing to error during production. This definition includes not only typesetting errors (“Druck-setz-Fehler”) but all possible mistakes that can occur during the production of the patent specification, including the use of a version of the claims that has not been granted.

Therefore, based on the legal situation presented above, the Board of appeal does not share the opinion of the appellant according to which the legal effect of the publication of the mention of the grant of the patent is limited to the extent to which the wording of the specification is identical to the content of the decision to grant a patent.

No legal effect of the publication of a corrigendum to the specification

[11] If even the publication of the B1 specification has no legal effect, then the mention of the publication of a corrigendum to the patent specification in the EPB 2008/12 on March 19, 2008, cannot have any legal effect in view of the beginning of the TFO. Therefore, because of the unambiguous legal situation the publication of the B9 specification has not triggered a “first” TFO, nor has it triggered a “further” TFO, limited to the embodiment C in claim 1.

Principle of unity of the opposition proceedings

[12] Moreover, it has to be noted that a “legal construction” such as the one aimed at by the appellant would contradict the principle of a unitary patent enshrined in the EPC.

It would be unlawful to consider that the first publication dated November 22, 2006, gave rise to a patent limited to the subject-matter of alternatives A and B in claim 1 and that it was only the publication of the corrected version on March 19, 2008, that gave rise to a patent encompassing the alternative C, because in grant or opposition proceedings [the EPO] can only grant a unitary patent based on the set of claims that has been expressly agreed upon by the applicant pursuant to A 113(2).

Moreover, the EPO does not have the power to grant a patent limited to individual claims of a set of claims presented [to it] and to reject the remaining claims of this set as not allowable. The set of claims is either allowable as a whole or to be dismissed, even if only one claim does not comply with the requirements of the EPC.

As can be seen from A 99(2), an opposition that is limited to certain claims encompasses (erfasst) the whole European patent and does not create a partial patent corresponding to the extent to which the patent has not been attacked. Therefore, in order to always ensure the maintenance of a unitary patent, A 99(4) provides that opponents shall be parties to the opposition proceedings as well as the proprietor of the patent. This provision guarantees the unity of the opposition proceedings and excludes, for instance, that there are several parallel or subsequent opposition proceedings.

As a consequence, the systematics of the unity of the opposition proceedings laid down in the EPC hinders mistakes that have occurred in the production and publication of the patent specification from having any influence on the beginning and the course of the TFO if the publication of the mention of the grant of the European patent as such was regular. As in the present proceedings the publication of the mention of the grant of the European patent was done in a legally correct way on November 22, 2006, the nine-month TFO began to run on that day. As a consequence of provisions of law, the mention of the correction of the patent specification, which was published at a later moment, did not cause the beginning of a completely new TFO nor did it trigger a TFO limited to the embodiment C of claim 1 of the patent specification, as explained by the appellant.

Legal delimitation with respect to a correction of a decision to grant a patent

[13] From a legal point of view, the present case of a retroactive correction of the patent specification is to be distinguished from the correction of the decision to grant. In the first case the patent specification is brought in conformity with the content of the decision to grant, i.e. the version of the patent as granted. The scope of protection of the patent as granted is not changed by [such action]. If the decision to grant a patent was extended, in the second case, by addition of embodiment C to claim 1, then this would result in a substantive amendment and, therefore, in an extension of the scope of protection conferred by the patent. The corresponding question of whether this correction could retroactively amend or extend the scope of protection in a legally effective (rechtswirksam) way does not arise in the present case. Therefore, the questions that have been referred to the Enlarged Board of appeal (EBA) in decision T 1145/09 are not relevant for the decision to be taken in the present case.

The “mere” correction of the patent specification, intended to bring the latter in conformity with the content of the decision to grant, does not change the substantive patent right that has arisen as a consequence of the decision to grant at all; it “only” corrects a misleading piece of information of the EPO concerning the content of the European patent, which has not changed.

Expiry of the TFO as an intermediate result

[14] The explanations given above, therefore, disprove the opinion of the appellant according to which the publication of the B9 specification on March 19, 2008, triggered a (fresh) nine-month TFO at least against the subject-matter of embodiment C of claim 1 of the patent. Because, therefore, as already shown under point [6] above, the TFO began to run when the mention of the grant was published in the EPB, on November 22, 2006, and, as a consequence, expired on August 22, 2007, the opposition filed on December 18, 2008, by the appellant has not been filed in due time.

Therefore, the Board of appeal had to examine whether there was a remedy for the failure to file the opposition in time. In this context, it was to be examined whether the requirements stipulated in A 122 constituted an exclusive set of rules or whether the PPL could be applied.

Domain of application of the rules for re-establishment pursuant to A 122

[15] The misleading information provided by the EPO in the form of the patent specification has caused the appellant to fail to file an opposition within the TFO because he only took notice of the scope of protection encompassing embodiment C by means of the publication of the B9 specification, after the TFO had expired. Therefore, the legal question arises whether re-establishment into the TFO can be granted.

The factual submissions of the appellant can be understood to mean, from a legal point of view, that the appellant had missed this time limit through no fault of his own, because he trusted that the wording of claim 1 of the German version of the originally published patent specification corresponded to the patent as granted. Therefore, the loss of rights caused by the expiration of the time limit was unjustified and had to be remedied. The further submissions of the appellant concerning the public’s need for legal remedies (Rechtsschutzbedürfnis) concern the procedural situation provided for in A 122, allowing someone who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit, to request re-establishment into the time limit.

[16] However, the appellant does not invoke this provision, and rightly so. He has not requested re-establishment and has not paid the corresponding fee because the law does not allow an opponent who has missed the TFO to benefit from re-establishment pursuant to A 122.

Although in the present case even the formal requirements pursuant to A 122 (request, time limit, fee, one-year deadline) have not been complied with and the appellant does not invoke this provision, the Board feels the need to explain why re-establishment of an opponent into the missed time-limit for filing an opposition is prohibited […] pursuant to A 122.

As a matter of fact, in order to decide on whether the failure to comply with the time limit can be legally “remedied” by application of the PPL, it is necessary to find that the factual situation is not governed by A 122. Otherwise the application of the PPL would constitute an inadmissible circumvention of the requirements laid down in A 122, which have not been fulfilled in the present case. In this context the one-year deadline of A 122(2), second sentence, has a great legal significance because the lawmaker has expressly laid down a positive foreclosure effect (Ausschlusswirkung) to the detriment of the person seeking a legal remedy.

Moreover, it is necessary to examine whether the lawmaker has intended a negative foreclosure effect. Insofar as the wording of A 122 would exclude an opponent from re-establishment, this would clearly constitute a negative foreclosure effect for the opponent. Then, if the factual situation is the same, the failure to meet the TFO could not ne remedied along other rules of law without violating A 122.

[17] The EBA has decided, as soon as in G 1/86 [8], that A 122 does not find application when the opponent has failed to comply with the TFO, not only because of its wording – which defines the applicant and patent proprietor to be entitled, but not the opponent – but also because for reasons of procedural certainty (Verfahrenssicherheit), because it is the filing of the opposition itself that creates a new legal instance (Rechtszug).

According to the ratio of this decision of the EBA an application of A 122 in favour of an opponent who has missed the TFO is excluded, be it only because at the expiry of the TFO the members of the public who could have become opponents did not have any concrete procedural relationship with the EPO.

The further reasons invoked by the EBA, relating to legal certainty, also exclude the direct or analogous application of this provision in favour of an opponent who has missed the TFO.

The fact that the opponent has missed the TFO through no fault of his own, does not alter the interests involved (Interessenlage) with respect to those of an opponent missing the TFO. Unlike ex parte proceedings, inter partes proceedings require [the EPO] to balance the interests of both parties. The “improvement” of the situation of the opponent could only be obtained at the expense of the patent proprietor’s legitimate expectations regarding the effectiveness and legal force (Rechtskraft) of the decision to grant. The EPC has expressly solved this conflict of interests in favour of the patent proprietor and has given the principle of legal effectiveness (Rechtskraftwirkung) priority by excluding a potential opponent from requesting re-establishment after having missed the TFO. An opponent who misses the TFO in spite of all due care required by the circumstances having been taken, therefore, is referred to the possibility of national nullity proceedings and cannot request re-establishment into his rights by means of a direct or analogous application of A 122.

This legal opinion has already been expressly validated in the case law, in decision T 702/89 [3]. The Board of appeal is of the opinion that this assessment still holds true because whenever the interests of the opponent in being re-established and legal certainty regarding the validity and legal force (Bestands- bzw. Rechtskraft) of a European patent are to be balanced, legal certainty is to be given priority in view of the effect of a finally granted (bestandskräftig) patent in the Contracting States (A 64).

Moreover, it is to be noted that the legal possibility of re-establishment would contradict the principle of unity of the opposition proceedings explained above under point [12] when there is more than one opponent because a re-establishment into the missed time limit would de facto extend the TFO. Additional opposition proceedings initiated retroactively by “re-establishment” could take a different turn, from the point of view of procedural law, than opposition proceedings that have been partly or completely terminated before, and could, therefore, lead to different versions of the patent.

Application of the PPL when time limits are missed

[19] The fact that the TFO has been missed cannot be “remedied” in the present case by invoking the PPL, as will be explained in more detail below, even if the appellant has not filed an opposition because it trusted that the patent specification issued by the EPO was correct.

PPL in connection with A 125

[20] The appellant invokes a violation of A 125 because the PPL has not been taken into account.

According to this provision, in the absence of procedural provisions in the EPC, the EPO shall take into account the principles of procedural law generally recognised in the Contracting States.

It follows that in order for this provision to be applied there has to be a legal loophole in the procedural provisions of the EPC. Also, there have to be principles of procedural law that are recognised in the Contracting States.

The statement of the EBA (see G 1/86 [4,7]) that according to the documents relating to the EPC, even in a case of force majeure an opponent should not be granted the right to re-establishment (and, therefore, [re-establishment] into a missed TFO) makes clear that in this context A 122 does not constitute a legal loophole but a negative foreclosure provision. Falling back on principles of procedural law generally recognised in the Contracting States pursuant to A 125, based on a factual situation governed by A 122, would be excluded because there is no legal loophole.

[21] The only way to consider that the factual situation of the present case is not objectively governed by A 122 is [to base one’s reasoning on the fact] that the appellant has trusted the patent specification B1 issued by the EPO to be correct and, as a consequence, has omitted to file an opposition in due time.

By issuing an incorrect patent specification B1 the EPO has not fulfilled its duty of publishing the (correct) patent specification laid down in A 98. This misleading information of the EPO extends beyond the factual situation governed by A 122(1). The factual element (Tatsbestandsmerkmal) “in spite of all due care required by the circumstances having been taken” only concerns the duties of the applicant/patent proprietor and is intended to encompass the malfunctions (Störungen) resulting therefrom. That the public has been misled by the incorrect patent specification B1, however, has its origin in a fact that is related to the duties of the EPO and which is not governed or excluded by A 122(1).

The factual point of contact for the application of the PPL as a remedy for having missed the time limit, therefore, is constituted by the false information of the public by the EPO, by means of the publication of the patent specification B1.

Legislative content of the PPL

[22] The case law of the Boards of appeal acknowledges that in general a user of the European patent system has to be able to trust the legal validity (Rechtsgültigkeit) of documents and procedures of the EPO and that he shall not be prejudiced if they are incorrect. The EBA has repeatedly found that the protection of legitimate expectations is acknowledged in the Contracting States to the EPC and anchored in European Community law (see G 5/88 [3.2] and G 2/97 [1]).

[23] However, the PPL as a “procedural principle” is not a rule of law that is uniformly defined, neither in the case law of the Boards of appeal nor in the case law of the Contracting States, and it cannot be directly applied as a concrete procedural rule by referring to A 125. Therefore, the application of this principle is not unrestricted and always has to be examined within the framework of the concrete procedural situation under consideration. When doing so, one has to take into account the procedural system of the EPC on the one hand and the concrete procedural embodiments (verfahrensrechtliche Ausgestaltung) of the PPL in the Rules of procedure of the Contracting states on the other hand.

[24] For instance, there is no generally accepted principle in the Contracting States according to which, when a time limit for using legal means in inter partes proceedings has been missed, it is sufficient to invoke some “official” false information in order to obtain a new time limit for using the legal means after the “official” correction, or for the time limit to be deemed not to have been missed.

Considering the present procedural question as to when the TFO begins to run after the grant of a patent, the German Federal Patent Court has decided, quite to the contrary, that in a legal situation corresponding to § 59(1), first sentence, of the German Federal Patent Law, a clear-cut entry into force of the legal effects of the patent is necessary for the sake of legal security [and that] the publication of the patent specification and its correctness as regards the content is not an additional requirement without which the TFO cannot effectively begin to run (BPatGE 28, page 18) [. The Court has] referred the opponent to the possibility of file inspection whereby it was possible to know the exact version of the patent. [NB: I had to interpret and complete the German sentence because it is unclear and appears to contain at least two syntax errors]

[25] In the decisions of the Boards of appeal also, the protection of legitimate expectations is considered to be a mere assessment criterion and not an absolute (fest normiert) rule. There have been differences regarding the legal consequences (Rechtsfolge): either re-establishment into the missed time limit has been granted (T 781/04 [10]) or the applicant was treated as if he had carried out the missing act (in due time) (cf. J 14/94 [9]; T 1973/09 [2.4])

Content of the decision G 5/88 of the EBA

[26] Decision G 5/88 of the EBA, applying the PPL, treats the opponent – whose opposition had been filed at the German Patent Office in Berlin within the nine-month TFO but had reached the EPO in Munich after expiration of this time limit – as if he had filed the opposition in due time at the EPO. Therefore, the legal consequence of the PPL to be applied was not a re-establishment into the missed time limit but the legal fiction of timeliness. Therefore, this decisions opens the legal possibility of remedying the fact that a time limit had been missed through no fault [of the opponent] without requiring the legal requirements for re-establishment laid down in A 122 to be fulfilled. By proceeding in this way the EBA has made the patent proprietor’s legitimate expectations and right to the legal effectiveness of the decision to grant subordinate to the interest of the opponent in an effective assertion of his legal rights (Rechtsverfolgung).

[27] However, the patent proprietor’s legitimate expectations regarding the validity and legal force of the decision to grant are not, as a rule, subordinate to the opponent’s legitimate expectations regarding the correctness of the contents of the patent specification. This would indeed contradict the principle of equal procedural treatment of the parties.

Such a subordination can only be justified on the basis of the individual circumstances. In the factual situation underlying the decision G 5/88 there were such particular circumstances because the patent proprietor had received the notice of opposition within a time frame in which he would also have received a notice of opposition filed in due time. Moreover, he had not received a notification stating that there had not been any opposition filed within the nine-month TFO. Therefore, the patent proprietor had no reason to have legitimate expectations regarding the legal effectiveness of the decision to grant after all. As he had received a notice of opposition immediately after the expiration of the TFO, he had to consider the possibility of a revocation or amendment of the decision to grant a patent. Therefore, the question of whether the opposition had been filed in time and was, as a consequence, admissible, depended on the decision of the EPO that still had to be taken. This factual situation does not justify any legitimate expectations of the patent proprietor regarding the legal effectiveness of the decision to grant that are worthy of protection.

[28] In the present case there are no circumstances that could justify giving the legitimate expectations of the appellant (opponent) regarding the correctness of the content of the patent specification priority over the legitimate expectations of the patent proprietor regarding the validity of the decision to grant, because no notice of opposition was filed within the TFO.

Quite to the contrary, after the expiration of the nine-month TFO the respondent received the communication of the EPO stating that no opposition had been filed. Moreover, it was not part of the duties of the respondent to ensure the correctness of the content of the patent specification because this is the exclusive duty of the EPO pursuant to A 98.

Nor can the appellant’s error concerning the consequences of the publication of an incorrect patent specification establish a situation justifying legitimate expectations (Vertrauenstatbestand) in his favour. It belongs to the appellant’s duties to keep himself informed on the legal consequences of a patent specification having an incorrect content, all the more as the EPO in Legal Advice n° 17/90 has expressly pointed out that the patent specification has no legal effects. It is true that the text of the patent specification is intended to facilitate the access of the public to the content of the patent as granted, and in particular to the category and extent of the exclusive rights (Schutzrecht), but it does not establish any legal effects concerning the course of the TFO, as can be seen from the explanations given above on the legal systematics [and in particular the connection] between A 64(1), A 97(4) and A 99(1)(4). Therefore, the Board of appeal agrees with the appellant that the publication of an incorrect B1 specification is a serious mistake of the EPO, but it does not agree [with the appellant’s opinion] that the publication of the incorrect specification establishes a situation justifying legitimate expectations in favour of an opponent, which could hinder the decision to grant from being – even partially – legally effective until the publication of a corrected specification, or justify that a fresh TFO run from the publication of the correction. Therefore, the patent specification can only serve for allowing a first review of the patent but cannot replace the examination of the scope of protection conferred by the granted patent by means of file inspection.

As a consequence, the appellant cannot rely on the application of the PPL [in order to remedy] the fact that the TFO has been missed. Therefore, the opposition was not filed in due time. As the opposition fee has been paid only after the expiration of the nine-month TFO, the opposition is deemed not to have been filed pursuant to A 99(1), third sentence.

Referral of an important point of law to the EBA

[29] Insofar as the appellant has requested that an important point of law be referred to the EBA, the requirements pursuant to A 112(1) are not fulfilled. The request is to be dismissed because the deciding Board of appeal can decide on all the points of law that are relevant for the decision without doubt. The answer to the question on the beginning and, therefore, the end of the TFO directly results from the legal systematics and the wording of A 64(1), A 97(4), A 98 and A 99(1)(4). The same holds true for the lack of legal effect of the publication of a European patent specification on the course of the TFO, on which the Board has decided in agreement with the previous case law (cf. T 438/87). The answer given by the Board to the legal question, i.e. that the failure to meet the TFO cannot be remedied by invoking the PPL if this necessarily entails a violation of the legitimate expectations of the patent proprietor regarding the validity or legal force of the decision to grant, is based on the principle of equal procedural treatment of the parties and is in agreement with the decisions of the EBA G 1/86 and G 5/88 cited above.

Confirmation of the refund of the opposition fee

[30] As the opposition fee has not been paid within the TFO, the opposition is deemed not to have been filed pursuant to A 99(1), third sentence. In view of this legal fiction, there was no cause in law for the late payment of the opposition fee (cf. T 323/87 [5]). An opposition fee paid without cause misses its purpose (Günzel in Benkard, EPÜ, Munich, 2002, §99, marginal number 35). Therefore, the OD was right in ordering the refund of the opposition fee.

Dismissal of the appeal

[31] The appeal is to be dismissed for the relevant reasons given in the impugned decisions. It is only for the sake of clarity in the final treatment of the proceedings that the Board has expressly confirmed the refund of the opposition fee in the order.

ORDER

For these reasons it is decided that:

1. The appeal is dismissed.

2. The refund of the opposition fee ordered by the first instance is maintained.

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T 1007/09 – Talking With Asterisks

2011-12-31T20:01:00.006+01:00

In its decison revoking the opposed patent, the Opposition Division (OD) found the main request (patent as granted) as well as the three auxiliary requests on file to lack inventive step.

The Board did not agree and maintained the patent as granted. It also considered the question of whether the appeal fee should be reimbursed:

*** Translation of the French original ***

[9] Pursuant to R 111(2) the decisions of the EPO which are open to appeal shall be reasoned.

According to the established case law a lack of reasoning of a decision constitutes a substantial procedural violation within the meaning of A 113(1) (cf. inter alia T 763/04; T 1182/05; T 246/08).

In the present case the impugned decision comprises a blank paragraph (paragraph 6.2.3).

The opposition division is of the opinion that ***********************

It is obvious that the OD intended to give the reasons justifying its dismissal of the second auxiliary request, but it did not do so, whereby it kept the appellant in the dark as to the reasons for the dismissal.

Therefore, the impugned decision is affected by a substantial prodedural violation. As the appeal is granted, it is necessary to order the refund of the appeal fee pursuant to R 103(1)(a).

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T 193/07 – Purely Hypothetical

2011-12-30T02:01:00.002+01:00

Both the patent proprietor and opponent 2 (!) filed an appeal against the decision of the Opposition Division (OD) revoking the patent under consideration.

In what follows the Board discussed the admissibility of the opponent’s appeal:

[2.1] According to A 107 “any party to the proceedings adversely affected by a decision may appeal”.

[2.1.1] The first instance opposition proceedings led to the revocation of the patent in its entirety as requested by opponent 2 […]. The order of the decision of the OD thus fully complies with the request of opponent 2.

[2.1.2] A party is only adversely affected if the order of the appealed decision does not comply with its request. Hence, in the present case, [opponent 2] is not adversely affected by the decision of the OD.

[2.2] [Opponent 2] argued that A 107 did not expressly further specify the meaning of “adversely affected”. In a case like the present one, with no possibility of continuing appeal proceedings initiated by an appeal of the patent proprietor if the latter withdraws its appeal, procedural situations could occur which could adversely affect the respondent-opponent in parallel or related national infringement or nullity proceedings.

[2.2.1] However, the board observes that [opponent 2] has not identified any specific reasons for which it considered itself to be adversely affected on the day it filed its notice of appeal. [Opponent 2] merely presented purely hypothetical considerations concerning potentially disadvantageous situations that may occur (in the future) in related national litigation proceedings. These considerations have no legal relevance under A 107, first sentence.

[2.2.2] In this connection, the board also observes that the possibility of an anticipatory cross-appeal is not foreseen by the EPC (see e.g. decision T 854/02 [2.2]). A respondent-opponent which is not adversely affected by a decision revoking the patent is thus not entitled to file an appeal for the sake of acquiring an independent appellant status instead of the status of a respondent (party as of right).

[2.3] Moreover, the board’s conclusion in the present case is in accordance with the established jurisprudence of the boards of appeal, according to which in cases where the order of the decision of the OD is the revocation of the patent, an opponent who requested revocation of the patent in its entirety is not “adversely affected by” said decision within the meaning of A 107, first sentence, irrespective of the reasons given in the decision. Reference can e.g. be made to decisions T 854/02 [3.1-2], T 981/01 [5-6], T 1147/01 [2], T 1341/04 [1.2(i),1.3] and T 473/98 [2.2-8]. Whether or not the OD, in its decision to revoke the patent on the ground of lack of inventive step, dealt with all the novelty objections raised by opponent 2 is thus not relevant in the assessment of the admissibility of the appeal of [opponent 2]. The board sees no reason for deviating from the established case law in the present case.

[2.4] Summarising, in the board’s judgement, [opponent 2] was not entitled to appeal against the decision of the OD, since it was not “adversely affected by” said decision within the meaning of Article 107 EPC.

[2.5] Therefore, the appeal of [opponent 2] is not admissible.

[2.6] Consequently, the board considered the submissions of [opponent 2] from the point of view of its status as a respondent to the appeal of the patent proprietor.

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T 305/07 – Time Does Not Heal All Wounds

2011-12-29T02:01:00.002+01:00

Evidence that has been considered inadmissible by the Opposition Division (OD) because it had been filed belatedly will not necessarily be admitted in appeal proceedings only because it is re-filed together with the statement of grounds of appeal. This is what the patent proprietor in the present case had to find out when filing an appeal against the decision of the OD revoking his patent.

[5] The [patent proprietor] filed the experimental evidence which had not been admitted by the OD, i.e. experimental evidence originally included in the letters dated 26 June 2006 and 21 July 2006, with its statement of the grounds of appeal and requests its admission.

[6] The board is not convinced by the [patent proprietor’s] argument that “the EPO and the Opponent have now had ample time to evaluate the experimental data and the Opponent has had time, should it wish to, to repeat any experiments”. The board does not see why the [opponent] should react to experimental evidence which is not “in” the proceedings (even if it could be expected that it would be re-filed in appeal proceedings). The [patent proprietor’s] argument overlooks the difference between filing and admissibility.

[7] The admissibility of late-filed evidence during appeal proceedings is specifically regulated in Article 12(4) RPBA stipulating that, without prejudice to the power of the board to hold inadmissible evidence which was not admitted in the first instance proceedings, everything presented by the parties with the statement of the grounds of appeal shall be taken into account by the board if and to the extent it relates to the case under appeal.

[8] The present claims differ from those dealt with by the OD and in relation to which it considered the experimental evidence as irrelevant. Thus, in the board’s view, Article 12(4) RPBA, first half sentence does not apply here, but Article 12(4) RPBA, second half sentence is to be considered. In particular, the question arises whether, and if so to what extent, the experimental evidence relates to the case under appeal.

[9] According to the [patent proprietor] the data originally presented in the letter of 26 June 2006 demonstrate not only that alkali metal salts are indeed suited to reduce trisulfide variants in a recombinant product, but also that this effect can be applied to other peptides. However, the board considers that what the [patent proprietor] aims to demonstrate is sufficiently demonstrated by the data in the patent, in particular those of Figure 2. The evidential weight of the data originally submitted with the letter of 26 June 2006 is moreover questionable, inter alia, since there is no information as to when, during the recombinant production process, the salt was applied, i.e. during or after fermentation.

[10] According to the [patent proprietor] the experimental data as originally submitted with the letter dated 21 July 2006 was filed in order to exclude the mechanism of trisulfide reduction disclosed in document D1 as the mechanism by which the alkali metal or earth alkali metal salts of the present invention operate. However, feature or features relating to a mechanism are absent from claim 1 and therefore it is not necessary to prove that mechanism.

[11] The board thus comes to the conclusion that none of the experimental evidence submitted with the statement of the grounds of appeal is relevant to the present case. Therefore, it cannot be considered to “relate” to it. Hence, in accordance with Article 12(4) RPBA, second half sentence the board decides not to admit the experimental evidence filed with the statement of the grounds of appeal.

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T 468/09 – Don’t Focus On The Negative

2011-12-28T02:01:00.001+01:00

The patent proprietor filed an appeal after the Opposition Division (OD) had revoked the patent under consideration because it found the disclosure not to be sufficient within the meaning of A 100(b).

Claim 1 of the main request before the Board read:

A urinary catheter assembly comprising at least one urinary catheter (1) having on at least a part of its surface a hydrophilic surface layer (6) intended to produce a low-friction surface character of the catheter by treatment with a liquid swelling medium prior to use of the catheter and a catheter package (7, 16, 29, 34, 42, 46, 51, 51’) made of a gas impermeable material and having a cavity (11, 18, 39, 48, 53) for accommodation of the catheter (1, 58, 69), characterized in that the cavity accommodates said liquid swelling medium for provision of a ready-to-use catheter assembly.

The appellant argued that the gist of the claimed invention was to provide an assembly for intermittent catheterisation, wherein the catheter could be withdrawn from the package in a condition which was suitable for insertion into the urethra. In order to put the invention into practice, the skilled person had to provide the urinary catheter with a hydrophilic surface layer, a package made of a gas impermeable material, to place the catheter and a liquid swelling medium in the package and to close the package. Urinary catheters with hydrophilic surface layers were known at the priority date of the patent in suit, and so were gas-impermeable packages. On the basis of the disclosure of the opposed patent and his common general knowledge, the skilled person would have no difficulty in carrying out the catheter assembly in the claimed manner, no matter if the liquid swelling medium were to be placed in direct contact with the catheter surface or in a storage body from which it was released. The subject-matter of claim 1 of the main request covered both embodiments and did not require storage of the catheter for years. The stability of the catheter coating was not an essential feature in the present patent.

Opponent 1 pointed out that the invention as claimed was restricted to the embodiments in which the coating was in contact with the liquid swelling medium (water) from the time of manufacture until use of the catheter, which could be up to 5 years later. It was essential that the coating be capable of being stored for the duration of this period without deterioration. Although not specified in claim 1, the recommended time period was, however, implicit. The subject-matter of claim 1 did not include the embodiment in which coating and liquid were kept apart until immediately before use, by confining the liquid in a spongy body. At the time the patent was filed, a skilled person was not able to produce without undue burden a hydrophilic catheter coating that could withstand wet storage for the required shelf life, i.e. avoiding deterioration of the coating. The patent was silent on how to solve this problem with the coating, namely how to provide a pre-wetted catheter assembly which could be stored for up to 5 years, typically 36 months, thus resulting in a long term preservation of the low friction surface characteristic of the catheter until its use. The evidence provided by the appellant clearly showed that the prior art coatings were not suitable. None of the catheters disclosed in the prior art cited in the patent was intended for wet storage. There was no indication in the patent of how the hydrophilic coating catheter could be made.

Opponent 2 argued along similar lines.

[4.1] A 100(b) states that an opposition may be filed on the ground that the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. The requirement is the same as for A 83, which addresses the European patent application before grant.

It is established case law that sufficiency of disclosure must be assessed on the basis of the patent specification as a whole, including the description and the claims. Moreover, the disclosure is only regarded as sufficient if it allows the invention to be performed in the whole range claimed, i.e. for all embodiments falling within the ambit of the claimed subject-matter.

[4.2] Essentially, claim 1 of the main request defines a urinary catheter assembly comprising a urinary catheter and a catheter package;

the urinary catheter has on its surface a hydrophilic surface layer (coating);
prior to use, the hydrophilic surface layer is brought into contact with a liquid swelling medium to produce a low-friction surface;
the catheter package is made of a gas impermeable material and has a cavity;
the cavity accommodates the catheter (preamble of claim 1) and the liquid swelling medium (characterising portion of claim 1) for provision of a ready-to-use catheter assembly.

Claim 1 of the main request covers the two embodiments which are disclosed in the patent specification.

[4.3] In a first embodiment, shown in Figures 1 and 2, the catheter package 7 is formed by two sheets 8 and 9 of gas impermeable material welded together along a seam 10 (joint) so as to define a cavity 11 for accommodating a catheter tube 2 and a compartment 12, spaced apart from the cavity by an transitional section 13 […] for accommodation of a liquid swelling medium confined in a storage body 14 made of a spongy or gel-like material […].

The catheter and the spongy body are arranged in the package prior to welding the sheets of gas impermeable material together, in order to form the urinary catheter assembly. This clearly means that the package 7 encloses both the cavity and the compartment […].

Prior to use of the catheter, the hydrophilic surface layer 6 (coating) is prepared for activation of its low friction character by squeezing the liquid out of the body in order to allow it to flow into the cavity and to bring the catheter into a ready-to-use condition […].

This first embodiment, therefore, corresponds point by point to the wording of claim 1 in suit and, contrary to [opponent 1’s] assertion, falls within the scope of said claim. In particular, the hydrophilic coating of the catheter which is accommodated in the cavity is activated “prior to use” by treatment with the liquid swelling medium (preferably water - see paragraph [69]) within the cavity for provision of a “ready-to-use” catheter assembly.

This embodiment can readily be carried out on the basis of the information given in […] the description. This was not contested by the respondents either.

[4.4] In a second embodiment, not shown in the figures, the spongy body 14 is not used. The liquid is introduced into the package during the assembly operation, prior to the welding of the joint. In this case, the compartment for the liquid swelling medium is integrated with the cavity for accommodation of the catheter, the coating being prepared and activated immediately after completion of the production process when the liquid has been introduced into the package […].

This embodiment is made possible due to the gas impermeable characteristic of the material of the package. As explained in […] the patent, this should be understood as a material sufficiently tight to avoid diffusion by evaporation of the liquid, so as to prevent the coating from drying out and to preserve its low friction character for a long time […]. A period exceeding the shelf life of the catheter is recommended, which could be up to 5 years but is typically 36 months.

It should be noted here that the disclosed range is not limited at the lower end and therefore does not exclude much shorter periods of e.g. a few months, though such interpretations should be ruled out which do not make any technical or commercial sense, such as a zero length period or a period of a few days. Moreover, the time period of 36 months is given as an example (“typically”; “recommended”). The important matter is to keep the coating activated and the catheter in a ready-to-use condition “at all times” […], i.e. within the time period corresponding to the above defined range.

Claim 1 does not mention any duration for the preservation of the coating, i.e. the period between the time of activation of the coating and the time at which a catheter is used. Therefore the subject-matter of claim 1 also covers the second embodiment since “prior to use” corresponds in that case to the activation of the coating at the time the catheter assembly is produced. From that time onwards, the catheter assembly is “ready-to-use”, in accordance with the wording of a claim 1.

[4.5] As can be derived from the patent specification, the problem underlying the claimed solution is principally to avoid diffusion by evaporation of the liquid swelling medium in order to protect the activated coating from drying out […]. This result is achieved by the gas impermeable characteristic of the material constituting the package, not by a characteristic of the coating. Therefore, the respondent’s arguments based on maintenance of the coating stability and of its coherence over time by avoiding its dissolution in the liquid are irrelevant and not convincing.

The same is true for the problem formulated by the OD of avoiding the coating reacting with the material inside the bag or dissolving into water.

[4.6] It results therefrom that all the discussions about the characteristics of the coating appear to be irrelevant for the assessment of sufficiency of disclosure and of the reproducibility of the catheter assembly as claimed. The same applies to the document cited by both parties in support of their arguments regarding the properties of the coating.

Having regard to the broad definition of claim 1 and given that the gas impermeable material of the package provides sufficient tightness against evaporation of the liquid for a period of time which could vary considerably (“up to five years”), the known catheters referred to in […] the patent specification could be suitable in any case and on the basis of this disclosure the invention can be carried out, even if such catheters may suffer from some other deficiencies. A 100(b) does not require that the best mode be performed.

Where a disadvantage of an invention could (possibly) prevent its use, this is not an obstacle to reproducibility provided that the otherwise desired result was achieved by the technical teaching disclosed in the patent (see also T 881/95). This is obviously the case here since the only problem addressed by the contested patent is confined to preventing evaporation of the liquid from the package and subsequent drying of the catheter coating, and this is solved by the provision of an appropriate material for the package. The coating stability of a catheter immersed for a long period of time is not an issue. Under the circumstances, it matters little whether, at the priority date of the contested patent, catheter coatings capable of withstanding water storage over a long period of at least 36 months were available or not.

[4.7] For the foregoing reasons, the requirements of A 100(b) are satisfied.

The case was then remitted to the OD for further prosecution.

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T 2166/10 – Missing Pages

2011-12-27T02:01:00.001+01:00

Missing pages are one of the recurring problems to be solved in paper D of the EQE, but the problem also occurs in real life and may have dramatic consequences if it is not dealt with properly.

The patent proprietor filed an appeal against the decision of the opposition division (OD) revoking his patent which had been granted on the basis of a Euro-PCT application.

In its decision the OD held, inter alia, that, as concerns the description, only description pages 1, 2 and 26 to 43 were entitled to the international filing date of 4 December 2001 and that the subject-matter of the patent as granted extended beyond the content of the application as filed. A main request that the patent be maintained as granted was therefore not allowable.

Here is what the Board had to say on this case:

[1.1] The appellant argued that the international application, on which the patent in suit was based, was completely filed on the date of filing, i.e. 4 December 2001, and that it therefore included, inter alia, description pages 3 to 25. Further, the appellant argued that, since the arguments given by the opponent in support of the opposition grounds were solely based on the assumption that these description pages were not part of the application as filed, the opponent’s arguments had to fail and, hence, that the opposition had to be rejected.

[1.2] In the present case it is therefore necessary to determine which documents made up the application as filed and, in particular, whether or not the description pages 3 to 25 were part of the application as filed on 4 December 2001.

[1.3] In this respect the board notes that in the proceedings before the IPEA, in the present case the EPO, the applicant submitted on 3 July 2002 a Demand under Article 31 PCT together with amendments under Article 34 PCT. In the accompanying letter the applicant made it clear that the amendments were to be taken into account by the IPEA only if the Receiving Office (RO), in the present case the International Bureau (IB), were not to grant a petition which was pending before the RO and in which the applicant requested that it be held that the international application was completely filed on 4 December 2001, i.e. including, inter alia, the description pages 3 to 25. The amendments under Article 34 PCT consisted of “new pages” 3 to 25, i.e. new paragraphs [0006] (second part) and [0007] to [0057]. In a table, the applicant indicated for each of these “newly added pages” and for each paragraph thereof which parts of the application as originally filed, i.e. description pages 1, 2 and 26 to 43, Figures 1 to 23, and claims 1 to 52, provided a basis.

The board further notes that, subsequently, in a communication dated 6 August 2002 the IB informed the applicant and the IPEA that following a decision:

the originally filed pages 3 to 25 of the description were held to be null and void and were to be disregarded;
the international filing date was corrected to read 4 December 2001;
the earliest priority date, i.e. 5 December 2000, was reinstated; and
the international application would be published as such, i.e. without pages 3 to 25 of the description, with an indication to this effect.

In accordance with this decision, the application was published without the above-mentioned description pages 3 to 25 and with international filing date 4 December 2001. The description as published included the following note between pages 2 and 26: “ATTENTION: PAGES 3-25 WERE MISSING UPON FILING”.

The International Preliminary Examination Report (IPER), dated 20 March 2003, was based, inter alia, on description pages 1 to 45 “as received on 01/03/2003 with letter of 25/02/2003” and which were annexed to the IPER. More specifically, paragraphs [0001] to [0005](first part) of the annexed description correspond to paragraphs [0002] to [0006](first part) of the application as published, whereas paragraphs [0005](second part) to [0008] and [0021] to [0068] of the annexed description respectively correspond to paragraphs [0006](second part) to [0009] and paragraphs [0010] to [0057] of the description pages as filed by the applicant by way of amendment under Article 34 PCT. The renumbering of the paragraphs was due to deleting paragraph [0001] and inserting a new section concerning the prior art, namely paragraphs [0009] to [0020].

On entry of the European phase, the applicant indicated that the proceedings before the EPO as elected Office were to be based on the documents on which the IPER was based.

With the communication under R 51(4) EPC 1973 the applicant was informed that the examining division (ED) intended to grant a patent on the basis of, inter alia, description pages 2 to 5 and 7 to 45 as annexed to the IPER. An annex to the communication included bibliographic data of the patent application, including, inter alia, 4 December 2001 as the date of filing of the application. By filing the translations of the claims and by paying the fees for grant and printing, the applicant approved the text intended for grant. The decision to grant was issued on 2 November 2007 and mentioned 4 December 2001 as the date of filing.

The above observations were not contested by the appellant.

[1.4] From the above, it follows that the IB held that the description as originally filed, i.e. on 4 December 2001, did not include pages 3 to 25 and that, in accordance with the applicant’s conditional request, the IPEA took into account the amendments submitted with the Demand, which resulted in the addition to the description as filed of new paragraphs [0005](second part) to [0008] and [0021] to [0068].

[1.5] In the board’s judgement, there can therefore be no doubt that the preliminary examination and the patent in suit were partly based on new description pages which had been submitted in the course of the international preliminary examination procedure by way of amendment and which were missing from the application as originally filed. The board therefore concludes that the application on which the patent in suit is based was not completely filed on the international filing date, i.e. 4 December 2001, in that it did not include description pages 3 to 25.

[1.6] The question of whether or not the decision given by the IB acting as RO, in which it was held that the description pages 3 to 25 were not filed on the date of filing of the international application, was correct does not alter the above facts and findings based thereon and, hence, need not be further considered by the board in the present decision. In fact, the board observes that neither before the EPO acting as IPEA in the international phase nor before the EPO ED in the regional phase did the applicant raise the issue of the missing pages or request a correction of the filing date (cf. J 03/00). Nor did the applicant contest that the preliminary examination or the patent to be granted was partly based on new description pages which were only submitted in the course of the international preliminary examination procedure by way of amendment and which were missing from the application as originally filed. Nor subsequently did the applicant file a request for correction of an error in the decision to grant.

[1.7] The appellant’s argument that the arguments submitted by the opponent in support of the opposition grounds had to fail for the reason that they were solely based on the wrong assumption that description pages 3 to 25 were not part of the application as filed, is therefore not convincing.

[1.8] The board concludes that the OD was correct when it held that the application as filed did not include the description pages 3 to 25. Further, the board notes that the OD gave a detailed reasoning as to why the opposition ground set out in A 100(c) prejudiced the maintenance of the patent as granted and that in the statement of grounds of appeal the appellant did not submit any arguments against this reasoning. Since the board does not see any reason to deviate from the reasoning given by the OD, it concludes that the opposition ground set out in A 100(c) prejudices the maintenance of the patent as granted.

[1.9] The appellant’s sole request is therefore not allowable.

[2] The sole request not being allowable, it follows that the appeal must be dismissed.

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J 22/10 – Foreign Affairs

2011-12-26T02:01:00.004+01:00

The present case was triggered by the late payment of extension fees.

The applicant had requested entry into the European phase on February 5, 2008 ; in the request the “extension” box was ticked but no extension states were explicitly mentioned:

In a letter dated April 7, 2008, the applicant’s representative stated that all five extension states were to be designated; he requested the EPO to debit five extension fees and five late payment surcharges from his deposit account.

In this letter, the representative cited the Guidelines, chapter A-III 12.2 and pointed out that the underlying interpretation of the Extension Agreements was incorrect.

According to him, the only sensible interpretation of the Extension Agreements with Albania, Macedonia and Serbia was “to use R 85a(2) EPC 1973 as was”. As there was no counterpart to R 85a(2) EPC 1973 under the EPC 2000, the old rule had to be applied. The representative also offered arguments why late payment or further processing should be available for Bosnia & Herzegovina and Croatia. So the extension fees for all five extension states could be paid at least two months late with payment of late payment surcharges or further processing fees.

The Receiving Section (RS) of the EPO was not persuaded : it refused the late payment and ordered the refund of the fees. It stated that the procedure for payment of the extension fee were not be governed by the EPC. All provisions relating to the implementation of the extension were established by national law in the relevant (extension) state, whereas the extension agreements merely established the amount of the extension fee. The respective national laws of the extension states became obsolete with the entry into force of the EPC 2000 and the deletion of R 85a (2) EPC 1973.

The applicant filed an appeal against this decision.

In compliance with earlier decisions on related matters, the Legal Board found itself to lack competence, and the appeal to be inadmissible:

[3] As noted by the Legal Board of Appeal in its communication dated 19 August 2011, the appeal proceedings are essentially concerned with the question whether such a denial of the RS is open to an appeal and, therefore, whether the appeal is admissible.

[3.1] According to the exhaustive provisions of A 106(1), only those decisions of the EPO may be contested which are taken by the departments listed therein, i.e. by the RS, Examining Divisions, Opposition Divisions and the Legal Division, acting within the framework of their duties under the EPC.

[3.2] The Legal Board of Appeal found in a number of cases that decisions taken by the EPO when carrying out its obligations under the co-operation agreements with certain states extending the protection conferred by European patents (Extension Agreements) were not based on the EPC itself but solely based on the Co-operation Agreements between the EPO on the one hand and the extension states on the other hand; it, therefore, rejected the respective appeals as inadmissible (J 14/00; J 19/00; J 9/04; J 2/05; J 4/05).

[3.3] Starting from this, the following aspect is relevant in deciding the current case:

[3.3.1] It follows already from the very nature of the Extension Agreements relevant in these appeal proceedings (Albania, OJ EPO 1995, 803 and 1996, 82; Bosnia and Herzegovina, OJ EPO 2004, 619; Croatia, OJ EPO 2004, 117; Former Yugoslav Republic of Macedonia, OJ EPO 1997, 345 and 538; Serbia and Montenegro, OJ EPO 2004, 583, 2007, 406 and 2010, 10) that any decisions based on such international treaties do not fall within the scope of the EPC and, as a result of this, are not subject to the jurisdiction of the Boards of Appeal.

[3.3.2] The procedure for payment of the extension fees is determined by the Extension Agreements alone. Although there are certain parallels between the formal procedures of extension of protection under the Extension Agreements on the one hand and the designation of a contracting state under the EPC on the other hand (A 78(2) and A 79(2) EPC 1973, R 38(1) and R 39(1) EPC), the Extension Agreements form a legal system of their own that is distinct from the legal system created by the EPC.

References within the Extension Agreements to the EPC, in particular to the so-called period of grace under R 85a(2) EPC 1973 (in combination with A 79(2) EPC 1973, R 107(1)(d) EPC 1973 and the EPO Rules relating to Fees), do not override this fundamental distinction.

Consequently, the legal nature of any decision taken on the legal basis of the Extension Agreements remains within that legal system and does not extend to the legal system of the EPC.

[3.3.3] The Extension Agreements make it absolutely clear that references to provisions of the EPC are exhaustive and, thus, that there can be no corresponding application of other provisions, including those of A 106 et seq. concerning the appeals procedure.

Neither is there anything in the structure or legal nature of the Extension Agreements to support the appealability of the contested decision within the legal framework of the EPC. As bilateral agreements, the Extension Agreements essentially deal – exhaustively and strictly separated from the EPC – with matters pertaining to the integration of extended European applications and protective rights into the respective national law and their relationship to national applications and rights based on the law on industrial property of the extension states.

Nor do the Extension Agreements provide for a transfer of jurisdiction on the EPO and its Boards of Appeal. Such a transfer could only have been established by an explicit and clear provision to this effect in the Extension Agreements. Particularly with regard to the principle of sovereignty of the extension states, there is no room for acknowledging an implicit transfer of jurisdiction from the respective national law and the national courts to the EPC and the Boards of Appeal.

[3.4] The Legal Board of Appeal is not competent to decide a case that is solely governed by a “foreign” legal system.

[4] All this has been brought to the appellant's attention by way of the communication of the Board dated 19 August 2011 to which the appellant chose not to reply. Having reviewed the facts and legal issues involved in this appeal case, the Board maintains the opinion already expressed in said communication and reiterated above.

[5] Since the contested notification of the RS dated 21 August 2009 refusing its request for late payment of the extension fee concerning the European patent application Nr. 06 752 688.9 is not open to an appeal according to A 106 the appeal has to be rejected as inadmissible.

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T 491/09 – Clairvoyance

2011-12-24T20:01:00.003+01:00

Member of an Opposition Division consulting the DG3 oracle

The opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form, based on the third auxiliary request, which had been filed during oral proceedings (OPs)

The opponent claimed that the OD should not have admitted this request into the proceedings.

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

[1.1] The Board notes that if the way in which a department of first instance has exercised its discretion on admitting requests filed during OPs is challenged in appeal, it is not the function of a Board to review all the facts and circumstances of the case as if it were in the place of the department of first instance, and to decide whether or not it would have exercised such discretion in the same way as or different from the department of first instance. A Board of Appeal should only overrule the way in which a department of first instance has exercised its discretion if the Board concludes it has done so according to the wrong principles, or without taking into account the right principles, or in an unreasonable way (see Case Law of the Boards of Appeal of the EPO, 6th edition 2010, VII.E-6.6).

[1.2] The question therefore arises whether the OD exercised its discretion properly according to the above stated criteria.

[1.3] In chapter E-III, 8.6 of the Guidelines for Examination in the EPO is stated that in exercising its discretion according to R 116(1) and (2)

“the Division will in the first place have to consider ... the allowability of the late-filed amendments, on a prima facie basis. If these ... amendments are clearly not allowable, they will not be admitted. Before admitting these submissions, the Division will next consider procedural expediency, the possibility of abuse of the procedure (e.g. one of the parties is obviously protracting the proceedings) and the question whether the parties can reasonably be expected to familiarise themselves in the time available with ... the proposed amendments”.

Prima facie allowability

[1.4] It transpires from points 3 and 4 of the minutes of the OPs that the OD regarded the then final 3rd auxiliary request as prima facie overcoming the opposition grounds based on A 100(b) and A 100(c) (in combination with A 123(2)) and thus as prima facie allowable in these respects. The appellant argues, however, that the OD did not examine the prima facie clarity of the claims, which it should have.

[1.4.1] The Board observes in the first place that the minutes of the OPs before the OD are silent on any issue of clarity raised by the appellant as a hindrance to admitting the request in question. Also at the OPs before the Board the appellant could not recollect having made such an objection in this particular respect.

To the contrary, the minutes, page 3 state that “the opponent raised no other objections than those already discussed”, which clearly could lead the OD to assume that no further formal issues remained, nor that any new formal objections were raised.

Admitting this request in such circumstances can already for that reason alone not be criticised.

[1.4.2] The appellant argued that the OD should ex officio have examined the entire claim for clarity, following the principles of T 1459/05 and T 656/07.

The Board wishes to point out that the OD could hardly take account of T 656/07 which was issued in 2009, i.e. after the OPs in opposition held on 10 November 2008. Remains only one decision T 1459/05, which was decided on 21 February 2008.

Apart from the fact that ODs can hardly be held to have immediate knowledge of any single decision when it issues, the Board cannot find fault with an OD which does not follow a decision which itself explains why its case is so particular that it warrants departing from otherwise consistent case law. It should be kept in mind that the allowability is examined merely on a prima facie basis and all the more so only in connection with a discussion on admissibility of a request.

Procedural expediency, abuse

[1.5] In the first place, due to the direct treatment of the 3rd auxiliary request by the OD, instead of returning to written proceedings, a protracting of the proceedings was avoided and the [patent proprietor] did not benefit from any further delay of the final decision on the part of the OD. Secondly, it is clearly the purpose of OPs before the department of first instance that all concerned are aware of the outstanding issues and which positions are taken on them, including those of the OD. Not allowing simple further amendments to resolve such issues would clearly run counter to this purpose.

In fact, the Guidelines, chapter E-III, 8.7, makes this clear by referring to the fact that it should be ensured (by the OD) that the parties file requests which are to the point and that claims are formulated appropriately. If the OD finds that some patentable subject-matter results from a limitation/amendment, it may even inform the proprietor of the fact and allow him an opportunity to submit amended claims thereon.

In view of the above, the Board can only conclude that the [patent proprietor] needed quite some prompting to finally come up with this request addressing the point under discussion, but not that this amounts to an abuse of proceedings by, nor to/an unwarranted advantage for the [patent proprietor].

Opponent reasonably expected to familiarise itself

[1.6] As argued by the [patent proprietor], the 3rd auxiliary request filed during the OPs was not going in a different direction, but was prepared on the basis of the 3rd auxiliary request filed before the deadline of one month before the OPs. Its claim 1 follows the course of the discussions during the OPs, in that it differs from claim 1 of the earlier 3rd auxiliary request by the expressions “blades, a base opposite to the blades”, “said adapter unit being adapted to be snap fitted ... toward the base” and “fixedly” having been deleted. These had been criticized by the appellant in its letter dated 30 April 2008, section 2.3, which was repeated at the OPs (see point 3 of the minutes). Further, the expressions “at least one of the second adapter engagement member and the handle engagement member being resiliently yieldable” and “such that said snapping may occur” have been added in reply to objections raised in this respect in the OPs. The three latter amendments exactly address the issues the appellant was well aware of before the OPs since it raised objections on them at the OPs.

The OPs were therefore proceeding towards resolution of the outstanding issues.

[1.7] From the minutes of the OPs it transpires that a number of interruptions have taken place, which the Board considers as sufficient for the appellant.

This is confirmed in the first three paragraphs of page 3 of the minutes where it is further stated:

“The chairman interrupted the OPs at 15:05 to allow the patentee to prepare a new and final request.

After reopening of the proceedings by the chairman, the patentee submitted a third auxiliary request (Annex AIII) and explained the amendments done.

The opponent raised no other objections than those already discussed”.

The Board can therefore only conclude that the appellant had sufficient opportunity to familiarize itself with the amended subject-matter.

[1.8] In summary, the Board sees no indication that the OD exercised its discretion to admit the 3rd auxiliary request into the proceedings according to the wrong principles, or without taking into account the right principles or in an unreasonable way.

This request is therefore in the proceedings.

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T 146/07 – Unsigned

2011-12-23T02:01:00.032+01:00

The opponent filed an appeal against the decision of the Opposition Division to maintain the patent in amended form.

The parties were summoned to oral proceedings (OPs) to be held on January 20, 2011. After the opponent had announced that he would not attend the OPs and had withdrawn his request for OPs, the Board cancelled the OPs on January 10.

On January 18, the Board received anonymous third party observations (TPO).

Would it take them into account?

[3] Anonymous TPO were received by the board at a very late stage, i.e. after the scheduled OPs had already been cancelled in view of appellant’s announcement not to attend these proceedings and the withdrawal of its subsidiary request for OPs.

According to R 114(1), any observations by a third party shall be filed in writing. This requirement implies that the observations have to be signed (see R 50(3) and R 86) in order to allow an identification of the third party (see Schachenmann in: Singer/Stauder, EPÜ, 5th ed., A 115, marg. n° 13). Identification is particularly important in the context of opposition proceedings in order to allow the competent organ of the EPO to verify whether the observations are indeed filed by a third party rather than by a party to the proceedings. Otherwise, a party might be tempted to submit late observations and/or documents by means of anonymous TPO in order to avoid negative procedural consequences such as apportionment of costs.

[4] When a party to the proceedings submits an unsigned document, the document is deemed not to have been filed if, after a corresponding invitation has been sent out by the EPO, it is not signed in due time (see R 50(3)). Since unsigned anonymous TPO do not allow the EPO to send out such an invitation at all, they necessarily remain unsigned. This has the consequence that they are deemed not to have been filed.

[5] The board is aware that anonymously filed TPO may nevertheless be adopted by a party to the proceedings as its own or may even trigger objections by the competent organ of the EPO of its own motion (see decision T 735/04 [2], dealing with the exceptional situation that a highly relevant patent application of one of the patent proprietors had been submitted by an anonymous third party). However, in the absence of such a further procedural act, anonymous TPO are to be disregarded altogether. This view is in line with the decisions G 1/03 and G 2/03 in which the Enlarged Board of Appeal refused to take into account an anonymously filed third party statement (see Section VI(3) of the decisions).

[6] Thus, the anonymous observations under A 115 received on 18 January 2011 are deemed not to have been filed and are disregarded by the board.

If the approach set forth in Singer’s commentary is followed, TPO simply cannot be anonymous.

This may be formally correct (although I doubt that the lawmaker had TPO in mind when drafting R 36(3) EPC 1973, which has become R 50(3)), but I do not think that it is in the interest of the EPO (and of the public at large) to require the parties filing observations to reveal who they are. The question of apportionment of costs is too marginal to balance the benefit that can be drawn from allowing anonymous TPO. Yes, there may be cases of abuse of proceedings (this is also possible when straw men act as opponents), but I guess the vast majority of TPO are just that, and many of them would not have been filed if anonymity was not allowed.

As has been found in T 458/07, TPO filed during opposition (appeal) proceedings should be treated as late filed documents, in compliance with the rules the Boards have developed for such documents (considering prima facie relevance, procedural economy, …). In the present case this would have allowed the Board not to take into account the TPO, without even considering whether they were signed or not, which I believe to be irrelevant.

But let us imagine that the present approach prevails. I wonder whether the signature of a professional representative would be considered sufficient if the third party was not identified. After all, one of the parties could have requested the representative to file the observations.

Also, would the use of the EPO third party observation website (here) lead to a R 50(3) notification? The corresponding form allows to identify the third party, but as far as I can see, there is no easy way of signing the form.

Be that as it may, if you are a professional representative and you are asked to file TPO in opposition proceedings, the safest way, obviously, would be to reveal the identity of the party and sign the observations. But what should be done if the third party wants to stay incognito, as it most likely will? I think I would sign the observations as a professional representative and make a clear declaration that the third party is not a party to the proceedings. Perhaps this would dispel any doubts of the EPO about a possible abuse of proceedings.

Any thoughts?

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T 2375/10 – Empty Hands And Heavy Hearts

2011-12-22T02:01:00.002+01:00

Sometimes Examining Divisions (ED) are too concise in their decisions refusing an application. This invariably leads to the a remittal, as in the present case.

The relevant part of the decision read:

Too short, says the Board:

[2] According to established jurisprudence of the Boards of Appeal, to satisfy the requirement of R 111(2) a decision should contain, in logical sequence supporting arguments. The conclusions drawn by the deciding body from the facts and evidence must be made clear. Therefore all the facts, evidence and arguments which are essential to the decision must be discussed in detail in the decision including all the decisive considerations in respect of the factual and legal aspects of the case. The purpose of the requirement to reason the decision is to enable the appellant and, in case of an appeal, also the Board of Appeal to examine whether the decision could be considered to be justified or not (see T 278/00; T 87/08 and T 1366/05).

In the present case the ED decided against the Appellant, that the subject-matter of claim 1 according to the sole then pending request did not involve an inventive step (A 56).

A 56 requires that the assessment of inventive step is made having regard to the state of the art. Accordingly, the logical chain of reasoning of the ED in the decision under appeal, to justify the above conclusions under A 56, has to contain a proper assessment of the question of obviousness in the light of the prior art.

The only part of the section “Reasons for the Decision” of the written decision under appeal dealing with the issue of inventive step is to be found in point 3, comprising two paragraphs.

Paragraph 3.1 merely summarizes the arguments of the Applicant and does not reflect the ED’s own considerations, this paragraph in fact should rather belong to the section “Facts and Submissions” of the written decision under appeal. The mere summary of a party’s submission is not per se a reasoning proper to the deciding body.

Consequently, paragraph 3.2 is the sole portion of the written decision under appeal which may reveal the reasoning of the Opposition Division (sic) on the issue of inventive step and, thus, is the sole portion of the decision which could justify the ED’s conclusion of lack of inventive step. However, there is no reference at all in this paragraph to any prior art, paragraph 3.2 merely stating that the claimed subject-matter did not comply with the requirements of A 56 since the technical effect of pressure reduction in a wellbore fluid was only demonstrated for graphite as the resilient material, but that this effect had not been shown for the other cited materials and therefore the selection of materials recited in claim 1 did not solve the technical problem in its entire breadth.

Therefore, the ED arrived in the appealed decision at the conclusion that the claimed subject-matter lacked inventive step merely by declaring that a purported effect has not been achieved by other cited materials, i.e. the technical problem as defined in the application as filed had not been solved in the entire breadth of the claims, without reformulating the problem in a less ambitious way and without assessing obviousness of the claimed solution to that reformulated problem in the light of the cited prior art.

Since, the requirement of inventive step defined in A 56 is based on the state of the art, the decision of the ED, by arriving at a conclusion of lack of inventive step without reference to prior art, is insufficiently reasoned in the sense of R 111(2).

[3] This failure amounts to a substantial procedural violation requiring that the decision under appeal is set aside and the case is remitted to the first instance (see T 278/00 [5]). The appeal is thus deemed to be allowable and the Board considers it to be equitable by reason of the substantial procedural violation to reimburse the appeal fee pursuant to R 103(1)(a).

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T 866/08 – Of Mice And Dogs

2011-12-21T02:01:00.002+01:00

The patent proprietor filed an appeal against the decision of the Opposition Division (OD) to revoke the opposed patent on the ground of insufficiency of disclosure.

The OD argued that the therapeutic effect of the claimed vaccine had not been established. The prior art did not contain a disclosure of the use of a polynucleotide vaccine formula for treating dog diseases. In view of document D12, which had been published after the effective date of the patent, there were doubts as to whether the polynucleotide vaccines could replace the existing effective vaccines. Therefore, it was not possible to extrapolate the results obtained with mice .

Claim 1 of the main request before the Board read:

1. A vaccine inducing a protective response for canidae comprising a plasmid containing and expressing the G gene of the rabies virus and a suitable vehicle.

Here is what the Board had to say on sufficiency of disclosure:

*** Translation of the French original ***

[2] According to the established case law, when a claim covers a therapeutic application of a substance or a composition, it is not enough for the requirements of A 83 to be fulfilled that the skilled person can realize or obtain the compounds to be used based on the invention that is disclosed in the patent and/or on his common general knowledge; it is also necessary to establish that the claimed compound does indeed have a direct effect on a metabolic mechanism that is specifically linked to the disease to be treated. This mechanism may be known from the prior art or indicated in the application as such, e.g. via experimental trials. Once this has been proven, it is possible to take into account evidence that has been published at a later stage in order to support these conclusions (see T 609/02 [9]).

[3] In the present case, the patent does not provide any experimental data establishing that a plasmid expressing the G gene can induce a protective response against rabies in canidae.

[4] However, the OD has pointed out, in substance, that at the date under consideration there was no use of polynucleotide vaccines for treating dog diseases in the prior art for vaccinating dogs against rabies. Moreover, in view of document D12, which has been published after the effective date of the patent, there were doubts as to whether polynucleotide vaccines could replace the existing effective vaccines such as the vaccines against rabies. Based on these arguments, the OD was convinced that it was not possible to extrapolate in a systematic way the results of document D1, which had been obtained with a polynucleotide vaccine expressing the G gene in mice, to dogs, and that a vaccine tested on mice absolutely had to be tested on dogs in order to determine its effectiveness.

[5] The Board notes that the present patent under consideration covers a compound, the G protein of the rabies virus, which has been identified in the prior art as having the direct effect of producing an immune response in a great number of animals such as canidae (see e.g. documents D6 […], D13 […] and D18). In view of the common knowledge of the skilled person in the technical field under consideration, there was no doubt on the immunological effect of the claimed compound , i.e. its direct effect on the relevant metabolic mechanism, nor has the OD explicitly formulated such doubts.

[6] As a consequence, the impugned decision has to be understood as questioning the fact that polynucleotide vaccines carrying the G protein of the rabies virus can indeed induce the claimed effect (i.e. that the carrier used can produce the claimed effect in canidae) in view of the disclosure of document D12, which has been published at a later stage, rather than expressing doubts regarding the direct effect of the this gene on the immune system.

[7] First of all, the Board notes that document D12 has been published shortly after the priority date of the present patent and, therefore, was not part of the general knowledge of the skilled person. Moreover, table 1 of this document sums up 29 scientific articles that had been published during the three years preceding its publication and which deal with “DNA vaccines ... to induce some form of immunity against a dozen or more infectious agents” […], thereby establishing the functionality of those structures in a great number of animals. As the OD nevertheless indicated, document D12 expresses doubts as to whether polynucleotide vaccines could replace the existing effective vaccines. However, the Board notes that this does not shed doubt on the technical usefulness of those vaccines but only their superiority with regard to the existing effective vaccines. Therefore, the Board cannot endorse the opinion of the OD according to which document D12 can raise doubts that a polynucleotide vaccine such as the one claimed could lack functionality.

[8] The Board also notes that […] the impugned patent refers to document D1. It contains the statement that “as regards rabies, protection of mice against virulent challenge has been demonstrated after treatment with a polynucleotide vaccine expressing the gene for the G protein under the control of the SV40 virus early promoter [reference to D1], a similar result being achieved by using the CMV IE promoter.” The Board notes that document D1, therefore, also discloses that a vaccination with a plasmid carrying the gene for the G protein of the rabies virus induces a protective response against the rabies virus in mice.

[9] As a consequence, the Board considers that the disclosure of the prior art is such that the vaccine according to claim 1 is likely to be useful for the therapeutic application at which the claim is directed. Under these circumstances, the disclosure in documents D23, D29, D41 and D45 to D49, which have been published at a later stage, may be taken into account for supporting these conclusions. As a matter of fact, examples 20 and 21 of document D45, i.e. the U.S. patent that is equivalent to the impugned patent, contain experimental data which extensively disclose the short and long term protection of dogs that have been vaccinated with the plasmid disclosed in example 16 and administered according to the teaching of example 19 of the impugned patent.

[10] This is why the impugned patent is considered to disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, as required by A 83.

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T 1789/09 – Margin Of Error

2011-12-20T02:01:00.002+01:00

This decision – dealing with an opposition that had been rejected by the Opposition Division – contains some interesting statements on the scope of a claim the decisive parameter of which was affected by a considerable margin of error.

Claim 1 of the main request before the Board read:

A process for the preparation of a granular detergent composition or component having a bulk density greater than 650 g/l, which comprises the step of dispersing a liquid binder throughout a powder stream in a high speed mixer to form granular agglomerates,
characterised in that the powder stream comprises crystalline zeolite A having an oil absorbing capacity of at least 40ml/100g. (my emphasis)

In what follows, the Board dealt with the interpretation of the claim, sufficiency of disclosure and novelty:

Interpretation and sufficiency of disclosure (all requests)

[1.1] The objections made by the [opponent] with respect to sufficiency of disclosure are based on the [patent proprietor’s] interpretation of the parameter “oil absorbing capacity” used in Claim 1 of all requests.

[1.1.1] According to the [opponent] this term referred to the initial oil absorbing capacity of the zeolite before any process step was carried out. Otherwise, there would be a lack of sufficiency of disclosure since Claim 1 covered the possibility of forming powdery agglomerates of the zeolite with other components before the powder stream is introduced into the high speed mixer. The other components might change the oil absorbing capacity of the zeolite. However, it was impossible for any skilled person to measure the oil absorbing capacity of the zeolite within such agglomerates.

[1.1.2] In the [patent proprietor’s] opinion this interpretation was against the gist of the invention as set out in the patent. It was apparent from the description that the invention did not cover embodiments where the oil absorbing capacity of the zeolite would be lost by combining the zeolite with other components prior to introducing the zeolite containing material into the powder stream.

The [patent proprietor] pointed to the first sentence of paragraph 17 of the patent in suit where the following is stated:

“It is an essential feature of the present invention that the Zeolite A used in the formation of the granular agglomerates has an oil absorption capacity of at least 40ml/100g”,

and argued that following the second sentence of A 69(1), according to which the description had to be used for interpretation, Claim 1 had to be construed such that the zeolite had the oil absorbing capacity of at least 40 ml/100g at the moment where the liquid binder is dispersed within the high speed mixer throughout the powder stream.

[1.1.3] A 69(1) relates to the extent of protection conferred by a European patent or patent application. According to the Protocol on the Interpretation of A 69 which was adopted as an integral part of the EPC to provide a mechanism for harmonisation of the various national approaches to the interpretation and determination of the protection conferred by a patent, this should be done so as not to overestimate either the literal wording of the claims or the general inventive concept disclosed in the description (see also G 2/88 [2.1, 3.3 and 4]).

The Board notes, however, that this does not mean that the scope of protection conferred by a claim is generally limited by the description.

However, the sentence cited from paragraph 17 of the patent does not even say that the zeolite exhibits the oil absorbing capacity only during the formation of the granular agglomerates in the high speed mixer. In the Board’s opinion, the term “in the formation of” certainly covers the process of forming granular agglomerates as such, as it is expressed in Claim 1.

Moreover, since the process of Claim 1 merely “comprises” the step of dispersing a liquid binder throughout the zeolite containing powder stream in the high speed mixer, further process steps like formation of the powder stream by agglomeration with other ingredients are not excluded.

The [patent proprietor] has agreed that it would not be possible for a skilled person to measure the oil absorbing capacity of the zeolite within such agglomerates.

Hence, in the Board’s opinion, defining a process by a parameter which clearly cannot be measured does not make technical sense to the skilled artisan.

[1.1.4] The Board concludes therefore, that anyone skilled in the art would understand the oil absorbing capacity mentioned in the claims as that of the zeolite as initially applied, i.e. before any process step is carried out in the course of which the initial capacity is changed. No other meaning can be attributed to the term in question.

As a corollary to this conclusion, consideration of the [opponent’s] objection under A 83 is redundant.

[1.2] Another disagreement concerns the parties’ interpretation of the value of the oil absorbing capacity.

According to the patent in suit […], the oil absorption values can be determined by following British Standard Part 7: 1982 which corresponds to ISO 787/5-1980, i.e. document D1.

[1.2.1] The [opponent] argued that this standard included an inaccuracy of measurement of ± 50%.

[1.2.2] According to the [patent proprietor], however, the error was much smaller since document D1 only mentioned a difference of at most 50% between the absolute measured values. Further, this error did not even apply to zeolites since document D1 concerned pigments and extenders.

[1.2.3] In the Board’s opinion there is no reason to assume that the error is smaller with zeolites, since the patent recommends the standard of document D1 for determining the oil absorbing capacity and does not mention a particular accuracy especially if zeolites are used.

Concerning the extent of the error, it appears that the [patent proprietor’s] understanding is the correct one (see document D1, page 1, second paragraph). However, even in this case, the error is still as high as ± 33.33% (± 1/3).

Due to this uncertainty of measurement, the Board considers the values mentioned in the claims not as selective points but as ranges of possible values. Accordingly, the value of the oil absorbing capacity mentioned in Claim 1 of the main request covers the range of 40 ml/100g ± 33.33%, hence values from about 26.7 to 53.3 ml/100g.

Novelty (main request and first auxiliary request)

[2.1] Lack of novelty of the claimed subject-matter has been objected to, inter alia, in view of Example H of document D2.

[2.2] This example discloses a process wherein the spray-dried powder of Example G is granulated with liquid nonionic surfactant as binder in a Fukae high speed mixer to form a granular detergent agglomerate having a bulk density greater than 650 g/l (pages 8 to 10).

The powder stream of Example G comprises zeolite A, specifically Wessalith P ex Degussa […]. The oil absorbing capacity of Wessalith P as measured according to document D1 is given as 36 g/100g […] which translates into 39 ml/100g […] and with the inaccuracy of measurement of document D1 into the range of 26 to 52 ml/100g.

[2.3] The [patent proprietor] argued that the inaccuracy of measurement in document D2 was not comparable with that of the patent in suit since it was based on a sample of 100g instead of 5g as in document D1 and the patent.

[2.4] However, the Board adopts in this respect the [opponent’s] view that the accuracy of measurement rather increases with increasing sample size.

[2.5] Thus, there exists a large overlap between the oil absorbing capacity of 26.8 to 53.2 ml/100g of the zeolite A used in the process of Claim 1 of the main request and that of the Wessalith P of 26.13 to 51.87 ml/100g used in Example H of document D2.

Since there is no hint in document D2 not to work within the overlapping area, hence with zeolite A having an oil absorbing capacity of 26.8 to 51.87 ml/100g, the Board concludes that document D2 anticipates the process of Claim 1 of the main request.

[2.6] The same reasons apply mutatis mutandis to Claim 1 of the first auxilary request which differs from that of the main request only in that the oil absorbing capacity of zeolite A is now at least 45 ml/100g. As this value covers the range from 30 to 60 ml/100g, it still overlaps to a large extent with that of the Wessalith P used in document D2 […].

[2.9] For all these reasons, the Board concludes that the subject-matter of Claim 1 of the main request and the first auxiliary request is not novel in view of Example H of D2 (A 54).

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T 1530/09 – The Whole Truth

2011-12-19T02:01:00.004+01:00

Although it is in principle possible to amend claims based on figures, such an amendment will not be possible if the teaching of the application as filed as a whole does not provide any support for the amendment, as the present decision shows.

In this case, both the opponent and the patent proprietor filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form.

Claim 1 of the main request before the Board was identical to claim 1 as granted :

An emission control apparatus of an internal combustion engine (10) having a storage device (22) provided in an exhaust passage (18) of the internal combustion engine (10) that stores a threshold level of NOx, and control means (40) that reduce NOx stored in the storage device (22) to recover a NOx storing level of the storage device (22) by performing a rich spike control by temporarily shifting during a lean burn operation of the internal combustion engine (10) an engine air-fuel ratio to a fuel-rich ratio,
wherein the control means (40) limit an execution time of the rich spike control, and perform a stoichiometric burn operation in which the engine air-fuel ratio is stoichiometric, after the execution time limited by the control means (40) elapses,
wherein the control means (40) switch to the stoichiometric burn operation when the limited execution time of the rich spike control elapses without recovering the NOx storing level and switch from the rich spike control to the lean burn operation when the NOx storing level is recovered,
wherein the control means switch from the rich spike control to the lean burn operation when the limited execution time of the rich spike control set by the control means (40) is not achieved but the NOx storing level is recovered.

The opponent pointed out that the subject-matter of claim 1 as granted was not disclosed in the application as originally filed : the entire application as filed made no reference to a direct switch from rich burn to lean burn, but only to the prevention of deterioration of CH and CO emissions (itself caused by prolonged rich spike control) by using a stoichiometric burn operation between rich and lean burn modes. Such operation should not be understood as omitted by the flowchart of Figure 2. Although the flowchart included a logic pathway seemingly indicating a possible omission of stoichiometric burn, this would not be considered correct by the skilled person as it would not be consistent with the timing chart of Figure 3 which highlighted the step of stoichiometric burn as the distinguishing feature with respect to the prior art process shown in Figure 4.

The patent proprietor relied on the flowchart of figure 2.

What did the Board decide ?

[1.1] Claim 1 includes a combination of the features of originally filed claims 1, 2 and 7, whereby claim 7 as filed however did not depend on claim 1 but only on independent claim 5. Furthermore, the following feature has been added to the wording of claim 1:

“wherein the control means switch from the rich spike control to the lean burn operation when the limited execution time of the rich spike control set by the control means (40) is not achieved but the NOx storing level is recovered.”

[1.2] Hence, the subject-matter of claim 1 is directed to the embodiment disclosed in the patent in suit which concerns a control apparatus arranged to perform the sub-sequence of the steps: lean burn - rich burn - stoichiometric burn - lean burn, but wherein the control apparatus is arranged also to include an alternative of omitting stoichiometric burn under certain conditions. Claim 1 as originally filed however required the control means to be arranged to perform a stoichiometric burn operation between the rich burn and the lean burn.

[1.3] Figure 2, which was cited by the appellant (proprietor) as disclosing both options, is a flowchart illustrating a processing procedure of the NOx storing capability recovering process.

It is correct that this flowchart includes the logic pathway of omitting the step of stoichiometric burn. Such option depends on whether the time duration set for the rich spike burn has elapsed or not (S270). The option of switching directly from rich burn (S260) to lean burn (S310) concerns the case where the rich spike duration is shorter than the set value (i.e. S270 “NO”) and additionally where the NOx has been recovered (i.e. S290 “YES”), in which case step S300 follows and sets the XRICHS flag to the OFF position, whereupon the procedure continues with a switch to lean burn (S310) and then ends the program.

[1.4] Hence, the question of whether the skilled person would consider the omission of the stoichiometric burn as an option which was disclosed in the application as filed has to be assessed on the basis of the whole contents of the specification and thus taking into account the disclosure in the description.

[1.5] The description of the patent in suit highlights as the basic issue […] the control of HC and CO emissions effectively by avoiding prolonged rich spike control and thus switching from the rich spike control to a stoichiometric burn operation. The underlying concept therefore includes the complete recovery of the NOx storing level of the storage device during stoichiometric burn operation to thereby curb deterioration of NOx emissions while at the same time avoiding deterioration of HC and CO emissions even when the amount of exhaust gas becomes great. It is consistently disclosed […] to set the duration time for the rich burn to be sufficiently short so as to obtain recovery of the NOx storing level during the stoichiometric burn operation.

Such consistent timing chart is complementarily shown in Figure 3 which shows that it is precisely the presence of a stoichiometric burn period directly subsequent to the rich burn duration which distinguishes the process and control means of the patent in suit from the process of the related art shown in Figure 4.

Thus for a skilled person, the flowchart of Figure 2 has to be read in line with this underlying concept of the process steps and not in isolation.

[1.6] In this regard it is undisputed between the parties, that there is no disclosure whatsoever in the description that the step of stoichiometric burn should or could be omitted. According to the general references in the description, there is no doubt about the skilled person being aware of the various interactions in the emission procedure (e.g. type of combustion engine, materials, temperatures, velocities) and being capable of correctly calculating and determining a time interval for the duration of rich burn. This duration period has to be calculated on the basis of the amount of the stored NOx, and has to be set sufficiently short in order to curb HC and CO-emissions via a subsequent stoichiometric burn operation even though no details of such calculation or determination are disclosed. However the skilled person is well-trained and has experience in such field such that setting a suitable time period to achieve this would be well within his knowledge.

[1.7] Concerning the logic pathway possibility shown in the flowchart of Figure 2 of seemingly omitting the switch to the stoichiometric burn by directly changing from a rich spike to lean burn, the purpose of that pathway is however unambiguously evident from the description (see paragraph [0035] of the A-publication, which states: “At this moment, the rich spike control has just started, and the rich spike duration Tr is less than the set value. Therefore, the unit 40 proceeds to step S290, in which the unit 40 determines whether the amount of NOx stored has become “0”.”). Thus, that pathway is intended to be used only for the time at the beginning of the rich spike duration when the rich spike duration is less than the set value and hence, directly after switching to rich burn. At such time neither the rich spike duration Tr can have elapsed nor the amount of stored NOx can be zero and the procedure must, evidently, remain in the rich burn (sub-sequence of steps S270 “NO”, S290 “NO”, “END”, return to S220, and rich burn is continued (paragraph [0036] of the A-publication). Hence, this sequence of steps is entirely in line with the general concept given in the description of the application as filed.

[1.8] There are no conditions disclosed in the patent in suit (concerning the determination and setting of the duration time of the rich burn or the amount of stored NOx) which would even suggest to a skilled person another possibility or other purpose of the steps disclosed in the flowchart than the one described which includes a step of stoichiometric burn.

[1.9] Thus, although there is a logic possibility within the flowchart of Figure 2 not to enter the step of stoichiometric burn, the description of the patent in suit discloses clearly and unambiguously to the skilled person that the value for the duration of the rich burn must be set correctly, which means in the present case being sufficiently short in order to allow the step of stoichiometric burn to be entered. Although it might be the case that if the rich spike control duration were set to be sufficiently long, a direct switch from rich to lean burn might occur if the flowchart were considered in isolation, nothing in the application as filed discloses in an unambiguous manner that such a duration would be set. Indeed, avoidance of the stoichiometric burn operation (which is not disclosed) would in fact only be the result of an unintended and thus incorrect setting of the rich spike duration by a skilled person.

[1.10] Claim 1, however, defines a control means which is specifically arranged to include this alternative option disclosed in isolation only as a logic pathway in Figure 2, namely switching directly from the rich spike control to the lean burn operation without requiring a stoichiometric burn operation to be included. When considering the whole contents of the application as filed however, there is no unambiguous disclosure of the control means being arranged in such a manner that it could ever switch from rich to lean burn directly.

Although the proprietor argued that e.g. atmospheric conditions might exist under which the control system would switch directly from rich to lean burn, this is not disclosed anywhere in the application as filed. More importantly however, since the flowchart of Figure 2 is used together with the description to aid understanding thereof (notably also together with Figure 3), it may even be the case that other sub-routines not shown in the flowchart would account for any such conditions. Without any disclosure in the application as filed to indicate that a switch from rich burn to lean burn might indeed occur under a specific set of conditions, the proprietor’s argument is nothing more than mere speculation.

The subject-matter of claim 1 of the main request thus extends beyond the content of the application as originally filed (A 100(c)), whereby the main request is not allowable.

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