Showing posts with label Admissibility of requests. Show all posts
Showing posts with label Admissibility of requests. Show all posts

Monday, 23 December 2013

T 158/12 – No Switching


Board member Gianciotto is about to draw the Article 12(4) RPBA sword  ...

This is an examination appeal.

Board 3.2.06 had to deal with the question of whether the applicant could be allowed to switch from one invention to the other.

[2.1] Claim 1 corresponds to originally filed claim 8 which formed part of the second invention during search. Claim 1 with this exact wording was withdrawn during the examination proceedings after having been submitted with the applicant’s response of 6 May 2011.

[2.2] According to Article 12(4) RPBA, the Board can hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings. In order to decide how to exercise this discretionary power, the Board reviewed the course of the examination proceedings.

[2.3] When entering the European phase of the proceedings, the appellant chose to base the prosecution of the application on the first invention and submitted (with letter of 25 March 2009) amended claims 1 to 10 wherein claim 1 further specified the oxygen storage component. The system of claim 8 was defined as comprising the article according to claim 1 and an on-board diagnostic system. That it was the applicant’s own volition to pursue the first invention was emphasized by the arguments submitted therewith that the inventive concept related to the use of a sufficient amount of an oxygen storage component having a pre-selected deactivation temperature range that coincided with a deactivation temperature range at which the hydrocarbon conversion of the precious metal component decreased below a pre-selected value, which concept underlies the first invention. Thus, the appellant deliberately chose the first invention to be the subject of examination.

[2.4] For this reason, the Board concludes that the first invention was chosen voluntarily for being the subject of examination and therefore, a claim directed to the second invention is not to be examined in this application. Since the main request relates to the second invention, the request is therefore not admissible.

[2.5] The appellant’s view was that there was no Article or Rule in the EPC which would prevent the applicant from changing from one invention to another – if they were searched – during examination.

[2.6] Contrary to such view, the Board considers that the Articles and Rules present in the EPC however form a statutory system which however, read together, clearly leads to this conclusion:
  • A 82 requires the European patent application to relate to one invention only or to a group of inventions so linked as to form a single general inventive concept.
This is a basic principle underlying the EPC.
  • R 137(2) gives the applicant a right to amend the application once of its own volition after receipt of the first communication. According to R 137(3), no further amendment may be made without the consent of the Examining Division (ED).
In such a way an application which includes various (groups of) inventions can be pursued on the basis of the desired (group of) invention.
  • A 76 states the possibility to file divisional applications.
In such a way the further (groups of) inventions can be pursued.
  • A 94(1) states that the request for examination of the European patent application shall not be deemed to be filed until “the” examination fee has been paid.
It is only possible to pay one fee for the examination.

[2.7] Hence, there is no provision which would allow the payment of multiple examination fees for a patent application. This is also in line with the possibilities to
  • either argue in the examination proceedings that unity exists – which should be done in reply to the first communication to the ED;
  • or to file divisional applications which allow the principle of one invention – one examination (and one examination fee for one examination proceedings) to be maintained.

Thus, it is clear that only one examination is to be carried out in respect of one application – and in respect of one examination fee being paid.

[2.8] Accordingly, after having chosen one invention (or one group of inventions) to be the subject of examination, this choice cannot be altered once examination of that invention has commenced.

[2.9] This systematic approach based on the statutory provisions of the EPC is, contrary to the appellant’s view, confirmed in G 2/92. It is true that opinion G 2/92 primarily concerns the non-payment of further search fees and states in its Headnote that “an applicant who fails to pay the further search fees for a non-unitary application … cannot pursue that application for the subject-matter in respect of which no search fees have been paid. Such an applicant must file a divisional application in respect of such subject-matter if he wishes to seek protection for it.” The opinion is based on the principle “that in order to proceed to grant a European patent application is required to contain claims relating to one invention only” (Reasons, item 2). However, the Enlarged Board’s opinion goes on further and additionally considers the examination stage and sets out (Reasons, item 2, second paragraph) that “At the examination stage, having regard to the requirement of unity of invention and the fact that only one examination fee can be paid for each application, clearly only one invention in each application is to be examined for conformity with the patentability and other requirements of the EPC.”
  
[2.10] Thus, although the appellant cited G 2/92 to support its view that this opinion exclusively concerned the prohibition of pursuing a non-unitary application in respect of subject-matter in respect of which no search fees had been paid and did not concern the examination procedure and subject-matter for which the search fees have been paid, the scope of G 2/92 extends – as explained supra – beyond the search stage in highlighting the principle of one fee for one procedural step also at the examining stage. Hence, the appellant’s view that the examination of an application could be based on more than one invention is not supported by this opinion of the Enlarged Board of Appeal.

[2.11] Further, the appellant was also of the view that the subject-matter defined in claims 1 and 8 as originally filed anyway concerned a single inventive concept since one independent claim (claim 8) encompassed the other (claim 1) based on the premise that claim 8 as filed inherently had all the features of claim 1, in particular since the deactivation was allegedly present as a material characteristic. Additionally, according to the appellant, claims 1 and 8 as originally filed afforded alternative solutions to the problem of the invention which might not be covered by a single claim in accordance with R 43(2)(c), and therefore did not contravene the provisions of unity (A 82).

[2.12] Such view cannot be accepted however, since when assessing the inventive concept underlying the subject-matter of claim 1 as originally filed, it is related to a diesel engine exhaust treatment article and a selected oxygen storage component defined in relation to a precious metal component. Claim 8 on the other hand is related to an exhaust system, not just the exhaust treatment article, and does not specify any particular characteristics of the components as in claim 1, and in fact not even a precious metal component. Likewise, claim 8 requires a pair of lambda sensors, whereas claim 1 puts no such restriction on the system. It is thus evident that one claim does not encompass the other. This was indeed why two search fees were requested and paid.

[2.13] The appellant further argued that it was unable to maintain the (present) main request during examination, because the ED had stated the application would then be “immediately” refused. Reference was made to the communication of 1 June 2011.

[2.14] The Board disagrees. Although the ED stated in the above referenced communication (which was issued in preparation of the oral proceedings) that “In the absence of any valid claims, the applicant has to count on an immediate refusal” as a consequence of pursuing the second invention, the ultimate refusal of a request – based on a reasoned decision – provides an appropriate basis for an appeal.

[2.15] There were anyway several possibilities of defending such a request in the first instance proceedings in both its written phase and also during the oral proceedings. The likelihood of receiving a refusal may indeed have been high, but the applicant’s withdrawal of the request prevented the ED from taking a decision on that request. The request could have been filed as an auxiliary request for example.

[2.16] For these reasons, the main request is not admitted into the proceedings as it should have been presented in the first instance proceedings such that it became the subject of a decision. Due to these reasons, the Board exercised its discretion under Article 12(4) RPBA not to admit the request into the proceedings.

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

The file wrapper can be found here.

Friday, 29 November 2013

T 2075/11 – It’s The Economy, Stupid


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

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

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

*** Translation of the German original ***

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

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

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

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

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

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

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

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

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

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

The file wrapper can be found here.

Tuesday, 15 October 2013

T 704/11 – Issues Of Complexity


I found this case interesting because of the refusal to admit the patent proprietor’s auxiliary request. One of the arguments of the Board was that the disclaimer raised complex issues involving G 1/03 and G 2/10:

[3.1] The [patent proprietor] submitted this request during oral proceedings (OPs), following the debate concerning the relevance of document D14, as a precaution against a possible adverse decision on novelty. Questioned by the Board, the [patent proprietor] provided no further justification for this course of action.

[3.2] In this respect, the Board remarks that

i) it was known to the [patent proprietor] since the receipt of the statement of the grounds of appeal of 31 May 2011 that the Appellant maintained his novelty objection based on the disclosure of D14, which objection had already been raised during the proceedings before the first instance; and

ii) the [patent proprietor] submitted amended claims (first auxiliary request at issue) with its reply to the statement of the grounds of appeal, which claims were supposed to overcome another objection maintained by the Appellant, i.e. the objection raised under A 123(3), but it refrained from filing amended claims as an attempt to overcome the novelty objection based on D14, also maintained by the Appellant.

Therefore, there is no justification for the filing of an auxiliary request addressing the novelty objection at such a late stage of the proceedings.

[3.3] Moreover, the amendment to claim 1 is not based on any of the dependent claims already considered during the opposition and appeal proceedings till the day of the OPs. Instead, the amendment consists in the insertion of a proviso (a so-called disclaimer) supposed to exclude the only potentially novelty-destroying subject-matter disclosed in example II/composition III of D14.

3.4 Hence, neither the Board nor the Appellant could foresee that the [patent proprietor] would consider proposing this type of amendment for the first time at the OPs before the Board.

[3.5] Furthermore, the insertion into claim 1 of a disclaimer not disclosed as such in the application as filed raises further issues of some complexity. In particular, this type of amendment cannot be considered to clearly comply, at first sight, with all the requirements of the EPC since it has to be evaluated, for example, whether it meets the criteria identified in the Order (points 2.2 and 2.4) of decision G 1/03 and to which extent some of the findings in decision G 2/10 (last two paragraphs of the Reasons) have a bearing on the assessment of the compliance of the proposed amendment with the requirements of A 123(2).

[3.6] Therefore, the Board decided not to admit the second auxiliary request into the proceedings (A 114(2) EPC 1973 and Articles 13(1) and (3) RPBA).

I take this for another indirect confirmation that as a result of G 2/10 we are in quite a difficult situation regarding disclaimers. The discussion of a recent decision (here) has shown that even among people having a keen interest in case law matters we are far from having a common understanding of where we stand. And apparently even some Boards feel that evaluating the bearing of G 2/10 on G 1/03 is not a straightforward task. Let us hope that the Enlarged Board will have an opportunity to dispel the fog in the near future.

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

The file wrapper can be found here.

Wednesday, 11 September 2013

T 926/12 – The Point Of No Return


In this revocation appeal the Board had to decide on the admissibility of the main request (and several other requests). The relevant facts are mentioned in the decision.

*** Translation of the German original ***

[1] During the oral proceedings (OPs) the patent proprietor declared that, in view of the fact that the Board had invoked the rules of procedure and refused to admit its “main request” and its “auxiliary requests 1 to 8” of May 29, 2013, […], it wanted to revert to its request of December 4, 2008, which it had submitted before the OD and have it considered as its main request. […]

However, the fax of the patent proprietor which [the EPO] had received on May 29, 2013, contains the following statement:
“… referring to the present summons for [OPs to be held on] July 4, 2013, and the annex to the summons to OPs [the patent proprietor] files a new main request and eight auxiliary requests and simultaneously abandons (unter gleichzeitigem Verzicht) the requests filed so far.”
The request filed before the OD is encompassed by the expression “the requests filed so far”.

“Abandonment” (Verzicht) means the irrevocable renunciation (endgültige Aufgabe) of a right. Whoever uses the word “abandonment” has to accept the consequences. At any rate, this is true for a professional representative such as the representative of the patent proprietor.

A declaration of abandonment of a request has a dual – i.e. substantial and procedural – nature. It is immediately successful in both respects. From the point of view of procedural law it is equivalent to the withdrawal (Rücknahme) of a request. However, unlike a withdrawn request, which can in principle be re-introduced into the proceedings – if the competent division or Board admits it - a request that has been abandoned cannot be filed afresh. This is due to the substantial aspect of the abandonment: the declaration of abandonment results in an immediate loss of the abandoned object.

During the OPs the patent proprietor confirmed the declaration of abandonment and the fact that it was a procedural statement. However, it was of the opinion that the declaration of abandonment, which had been filed together with the requests referred to as “main request” and “auxiliary requests 1 to 8” in its letter of May 29, 2013, was not to be admitted into the proceedings because the requests had not been admitted either.

This opinion ignores the nature of a declaration of abandonment, which has an immediate effect. Therefore, the declaration of abandonment cannot be the object of an admission by the Board. This holds true, even if the [opponents] give their approval to a treatment of the abandoned request. The abandonment is not a “request” (Antrag) within the meaning of Article 12(4) RPBA and not a “case” (Vorbringen) within the meaning of Article 13(1) RPBA.

The present Boards considers these views to be in agreement with the case law of the Boards of appeal, which distinguishes between an amendment or withdrawal of a request on the one hand and an abandonment of a request on the other hand. See e.g. T 828/93 [2] and T 922/08 [2.1]. This distinction clearly is based on the assumption that an abandonment has the consequence that a request cannot be treated in the proceedings any more.

Accordingly, the Board was hindered from admitting the request filed before the OD into the appeal proceedings, regardless of the fact that the opponent approved its admission.

So be careful which words you use in your written submissions.

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

The file wrapper can be found here.

Tuesday, 3 September 2013

T 1351/10 – No Excuse


[2] The main request under consideration was filed as the [patent proprietor’s] fourth auxiliary request with letter of 4 February 2013, i.e. one month before the oral proceedings (OPs) before the board. It is identical to the main request underlying the decision of the opposition division (OD) […].

[2.1] According to Article 13(1) RPBA […] 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.

[2.2] The [patent proprietor] argued that in August 2010, some days before the end of the time limit for filing the statement of grounds of appeal, the professional representative in this case was changed. It was not possible at that time to review the case carefully and to submit correct requests. Use had to be made of what the representative’s predecessor had prepared.

[2.3] However, a change of professional representative is not an objective excuse for not filing appropriate requests along with the statement of grounds of appeal, and in particular for not maintaining the main request underlying the decision under appeal. In fact, this rather presupposes a deliberate choice by the [patent proprietor]. In any case, a change of representative at the time of filing the statement of grounds of appeal certainly cannot justify the filing of the main request only one month before the date of OPs before the board.

[2.4] Moreover, in its letter dated 4 February 2013, the [patent proprietor] only stated with regard to the fourth auxiliary request: “It is requested that the patent be maintained in amended form with the same claim 1 submitted during the opposition procedure with letter of December 18, 2008 of the previous patent representative, and with dependent claims 2-5 of the patent as granted”. No arguments in support of the inventiveness of the subject-matter of claim 1 – which would challenge the decision of the OD in respect of the main request – were given.

[2.5] In the board’s view it would not serve the purpose of procedural economy in these appeal proceedings to allow the [patent proprietor] to defend its main request underlying the decision under appeal for the first time in OPs before the board. Moreover it would go against the principle of fair proceedings to admit the main request into the proceedings, since the [patent proprietor’s] conduct led the [opponent] to believe that the main request underlying the decision of the opposition proceedings would no longer be the subject of discussion, and, also due to the lack of any written arguments in support of the fourth auxiliary request in the [patent proprietor’s] letter of 4 February 2013, the [opponent]might well have been surprised by the [patent proprietor’s] arguments.

[2.6] Thus, the board, exercising its discretion under Article 13(1) RPBA, did not admit the main request into the proceedings.

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

The file wrapper can be found here.

Friday, 30 August 2013

T 1340/10 – Last Minute



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

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

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

What did the Board do with this request?

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

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

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


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

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

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

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

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

The patent was finally revoked.

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

The file wrapper can be found here.

Tuesday, 20 August 2013

T 1979/11 – Exceptionally Broad


In this case only the opponent appealed against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form. In what follows the Board discusses the admissibility of the main request and confirms one exception from the principle prohibiting reformatio in peius.

[2.1] Claim 1 of the main request as found allowable by the OD referred to a process for the preparation of methionine granules wherein the granules are characterised by a certain bulk density and a certain particle size distribution […]. Claim 1 of the present main request differs from this claim in that the particle size characteristic of the granules has been deleted […]. Claim 1 of the present main request is thus broader than claim 1 of the main request as allowed by the OD.

In the appellant’s view, due to this broadening, the present main request violates the principle of the prohibition of reformatio in peius. The appellant therefore requested that this request should not be admitted into the proceedings.

The board acknowledges that the broadening of a claim effected by a proprietor/respondent in appeal proceedings is generally contrary to the principle of the prohibition of reformatio in peius. However, in the present case, the broadening of claim 1 by the deletion of the particle size characteristic is a reaction of the respondent to the appellant’s objection under A 83. This objection had not been made during the opposition proceedings but has been raised for the first time in the statement of grounds of appeal […].

As outlined in G 1/99 [12-14], it would not be equitable to allow the appellant/opponent to present a new attack and at the same time to deprive the proprietor/respondent of a means of defence. Even though G 1/99 specifically addressed a reaction of the proprietor to an error of judgement by the OD concerning the allowability of an amendment, the equity approach as outlined by the Enlarged Board of Appeal is not limited to the situation specifically dealt with in G 1/99. On the contrary, it covers, in addition to an error of judgement by the OD, other situations involving a change of the factual and/or legal basis on which limitations have been made by the proprietor prior to the appeal by the opponent as the sole appellant (T 1843/09 [2.4.3-4]).

Hence, the present situation, in which the broadening of the claims results from a reaction of the respondent to an objection raised by the appellant for the first time in the appeal proceedings, justifies a deviation from the principle of the prohibition of reformatio in peius. This principle thus does not speak against the admittance of the main request into the proceedings.

[2.2] The only further argument made by the appellant as regards the admissibility of the main request was that no reasons for the filing of this request were given and hence the appellant was not able to properly react to this request. However, the respondent has merely deleted the particle size characteristic which had been objected to by the appellant and by the board in its preliminary opinion. It was thus self-evident that the reason why this amendment was made was to overcome the appellant’s and the board’s objections.

[2.3] The board therefore decided to admit the main request into the proceedings.

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

The file wrapper can be found here.

Friday, 19 July 2013

T 1343/09 – No Refund


In case you had doubts, Wunderwaffe Article 12(4) RPBA can also be used against a request for reimbursement of search fees.

*** Translation of the German original ***

[4.1] Pursuant to R 64(2) a request for reimbursement of a further search fee has to be filed during the examination of the European patent application.

According to the minutes of the oral proceedings held on January 28, 2009, before the Examining Division (ED), this has not been done. Point 5 of the minutes states: “After a short deliberation the Chairman asked whether the applicant intended to maintain the request for reimbursement of the additional search fees that had been paid …. The representative answered in the negative.”

Thus the ED has correctly stated in its decision that there was no corresponding request on file.

[4.2] Although the Board, pursuant to Article 12(4) RPBA, shall take into account everything presented [by the applicant] together with the appeal and the statement of grounds of appeal, the same provision entitles the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings. This is all the more true for requests that have been withdrawn during the first instance proceedings (cf. T 361/08 [13]).

The admission of a request for reimbursement of further search fees that had been paid would lead to the Board dealing with the corresponding questions for the first time in appeal proceedings or remitting the case to the first instance (A 111(1)). However, admitting the present request, which had at first been withdrawn, at such a late stage would go against the duty of procedural economy in appeal proceedings. Moreover, the appellant has not given any reasons justifying its request.

The question of whether the request before the Board was filed in due time within the meaning of R 64(2) may remain unanswered.

Thus the Board, duly exercising its discretion, does not admit the request for reimbursement of further search fees that had been paid into the proceedings.

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

The file wrapper can be found here.

Friday, 28 June 2013

T 433/11 – Cistus Et Al


Both the patent proprietor and the opponents filed an appeal after the Opposition Division had maintained the patent in amended form.

The decision contains some interesting bits and bites.

Among other things, the novelty of claim 1 of the main request was discussed. This claim read:
Use of Cistus for producing a composition having an antiviral activity directed against rhinoviruses for inhibiting the infectiousness of rhinoviruses  for the prophylaxis and/or treatment of common cold diseases, wherein the common cold disease comprises a primary infection, caused by rhinoviruses. (additions with respect to claim 1 as granted are underlined)
*** Translation of the German original ***

[19] The Board is of the opinion that in view of the wording of present claim 1 the feature distinguishing the present claim from claim 1 as granted – “having an antiviral activity directed against rhinoviruses for inhibiting the infectiousness of rhinoviruses” – is an inherent property of compositions made from Cistus plants. The partial feature “for inhibiting the infectiousness of rhinoviruses”, when associated with the feature “for the prophylaxis and/or treatment of common cold diseases”, further indicates how the antiviral activity is obtained in the prophylaxis and treatment. However, in view of the way in which it is used in the claim, the feature “having an antiviral activity directed against rhinoviruses for inhibiting the infectiousness of rhinoviruses” does not have any effect on the definition of the common cold diseases that are to be treated. The explicit indication of this inherent property of the substance does not change the definition of the substance, and the indication of the mode of action (Wirkmechanismus) does not provide a more precise definition of the moment of administration during the prophylaxis or treatment. Thus the Board comes to the conclusion that the scope of protection of present claim 1 is the identical to the scope of protection of claim 1 as granted. […]

[28] Claim 1 concerns a so-called second medical indication, in which the use of a known product for the therapeutic treatment of a particular disease is claimed. Based on the Board’s interpretation of the claims (see point [19] above) it follows that claim 1 claims as an embodiment the “use of Cistus for producing a composition for the treatment of common cold diseases, wherein the common cold disease comprises a primary infection, caused by rhinoviruses”.

[29] Document D1 states […] under the heading “Viruses challenge the immune system”: “Sometimes the agents succeed in penetrating the natural “protective barrier”. A cold (Schnupfen) is above all caused by rhinoviruses that penetrate into the nasal mucosa. They then integrate the body’s own cells and have them produce and emit viruses. Thereby the surrounding tissue is damaged and the nasal mucosa becomes inflamed. The body reacts by increasing the production of mucus. Once the nose is congested, nose drops based on Cystus® can provide help because the polyphenols contained therein reduce the swelling and inhibit the inflammation. You can produce them by simply mixing 100 ml of Cystus® brew with 1 g of sea salt and fill the mixture into a dropper bottle from your pharmacy. […] Thus you can reach all nasal passages and you will soon be able to breathe deeply again. The inflammation of the nasal mucosa is often felt “further downwards” via a sore throat. Gurgling with Cystus® brew provides relief (also in case of purulent tonsillitis) […]. (emphasis by the Board).

[30] This extracts shows that document D1 discloses the use of nose drops made from Cytsus® (sic) brew for treating (symptoms such as a cold or sore throat) of  common cold diseases, wherein the common cold diseases include diseases due to a primary infection caused by rhinoviruses.

[31] Document D1 describes the treatment of common cold diseases by means of a medicament made from a substance called Cystus®. The document does not explicitly indicate how this substance was produced or which ingredients it contains. During the oral proceedings (OPs) the [patent proprietor] has not contested that the Cystus® products disclosed in document D1 are compositions containing constituents of plants of the genus Cistus. Thus the Board considers it to be established that document D1 discloses to the skilled person medicaments containing constituents of plants of the genus Cistus, and that any other interpretation of the expression Cystus® would go against the common understanding of the skilled person.

[32] Thus the Board is of the opinion that the skilled person knew, from document D1, both the composition defined in claim 1 as well as the therapeutic treatment of the disease mentioned therein by means of this composition. Thus document D1 discloses an embodiment within the scope of claim 1.

[33] The Board is of the opinion that the technical circumstances of the present case are clearly different from those underlying decision T 509/04. The case dealt with in decision T 509/04 concerned the “attainment of a therapeutic effect, promoting normal muscle growth in patients suffering from cerebral palsy”, which had not been disclosed in the published state of the art. In the present case, however, the treatment of patients suffering from common cold diseases caused by rhinoviruses is known from document D1. Therefore, the Board is of the opinion that the principles regarding novelty established in decision T 509/04 do not apply in the present case.

[34] The Board is also of the opinion that decision T 836/01 cannot be used for establishing novelty either. In this case the novelty of the claimed medical use was justified by the fact that the group of patients that received the treatment was different (distinct subgroup) from the one known from the state of the art, and thus novel. However, in the present case the group of patients or patient population that is to be treated is explicitly disclosed in document D1. Thus T 836/01 is irrelevant for the present case, too.

[35] The Board is of the opinion that the present case rather compares to the situation dealt with in decision T 254/93, which was later followed by the Boards in decisions T 669/01 and T 486/01. In decision T 254/93 it was decided that the mere explanation of an effect obtained when using a compound in a known composition, even if the effect was not known to be due to this compound in the known composition, cannot confer novelty to a known process if the skilled person was already aware of the occurrence of the desired effect (see headnote 2 and point [4.8] of the reasons).

[36] Thus the subject-matter of claim 1 does not comply with the requirements of A 54; the main request is to be dismissed.

The Board then dealt with the request for oral submissions by the chief executive (Geschäftsführer) of opponent 1:

[37] During the OPs, when the novelty of the main request was discussed […], [opponent 1] asked for its chief executive Dr. S. to be allowed to make submissions concerning document D1.

[38] The representative of [opponent 1] has made a corresponding statement during the OPs and has also confirmed in its letter […] in which he requested the minutes of the OPs to be corrected accordingly […] that Dr. S. wanted to make submissions in his quality as chief executive of [opponent 1]. However, as this request was only filed in the context of the discussion of novelty, the Board could only interpret this request to mean that Dr. S. wanted to make submissions from his point of view as a skilled person.

[39] The Board has dismissed this request after having heard all parties. The representative of [opponent 1] then objected that this dismissal violated its right to be heard.

[40] Irrespective of whether an employee of a party is entitled to complement the explanations of the professional representative authorized by this party in the course of OPs or whether the presence of this employee and the subject of the submissions he wants to make orally have to be announced, it appears to be appropriate indeed to give a chief executive of a party (in the present case, a Geschäftsführer of a German company, but also a person in a corresponding position in a non-German company) the opportunity to make submissions for this party because this person is de facto or at least apparently (depending on the rules laid down in the founding statutes (Gründungsstatut)) entitled to speak in the name of the company.

[41] However, the Board is of the opinion that in view of the request to be dealt with in the present case the central question is not the question of whether there is an authorisation to represent but the question of whether the request is admissible.

[42] It is irrelevant in this context whether Dr. S. wanted to make his submissions as a skilled person or as chief executive, or both. What matters is that his explanations would necessarily have contained facts (i.e. evidence or arguments) that had not been submitted before by [opponent 1] or its authorised representative. Otherwise there would not have been any reason to request that Dr. S. be authorised to make submissions. As a matter of fact, the Board is of the opinion that this request, is to be understood as a request for the admission of new facts and/or arguments that has been filed at a very late stage of the proceedings, i.e. during the OPs.

[43] However, it is within the discretion of the Board to admit new facts and arguments that have been submitted after the filing of the complete case of a party, and in particular after summons to OPs (see A 114(2) together with Article 13(1) and (3) RPBA […]).

[44] In a case that is as disputed as the present case – with pending proceedings before national courts of justice – in which the parties already had had the opportunity to make written submissions, the admission of new facts and arguments in favour of a party would very likely have caused the adverse party to request the admission of new counter-facts and counter-arguments, thereby delaying the proceedings or even requiring the OPs to be postponed. In this context it also has to be mentioned that [opponent 1] had in its letter dated September 19, 2011, filed a request for acceleration of the proceedings before the Board because of pending infringement proceedings and none of the other parties had objected to this request, which the Board has granted by summoning OPs at short notice (the original date for the OPs was February 29, 2012).

[45] Under these circumstances the Board has exercised its discretion and decided not to allow Dr. S. to make [oral] submissions.

[46] The Board does not agree with [opponent 1] that the refusal of submissions by Dr. S. has violated its right to be heard. Both [opponent 1] and all other parties to the proceedings were offered the possibility to comment on all issues that were discussed during the OPs, including the issue which Dr. S. wanted to comment, i.e. the novelty of the main request in view of document D1.

[47] Within the framework of the EPC the right to be heard enshrined in A 113(1) does not mean that the parties to the proceedings may without limitation express their opinion on all possible issues at any stage of the proceedings, because the right to be heard is, as far as the moment during the proceedings is concerned, limited by the possibility not to consider late filed submissions, which is enshrined in A 114(2) (see also Articles 13(1) and (3), which result from it).

[48] Finally, the Board notes that [opponent 1] was not adversely affected, even in case its right to be heard had been violated in any way, because its submission – even without the explanations by Dr. S. – have been successful in the end: the Board has indeed decided that document D1 destroys the novelty of the main request […].

The Board finally maintained the patent on the basis of the first auxiliary request. There is a noteworthy paragraph on the adaptation of the description that remained to be done:

[78] [Opponents 1 and 2] requested the description to be adapted during the OPs before the Board because the pending national infringement proceedings required the presentation of the final version of the impugned patent. However, the Board was of the opinion that precisely because the impugned patent is the object of national lawsuits it is necessary to be particularly careful when adapting the description. However, the Board considers this could not have been done at the end of the OPs towards 19:30 in view of the great length of the proceedings. Thus the Board has dismissed the request of [opponents 1 and 2] and has remitted the case for adaptation of the description, which, incidentally, is not unusual.

Refusing the chief executive of the opponent to make a statement under the pretense that he would intervene in the quality of a skilled person does not sound right to me. As the Board admits, when the manager speaks, the party speaks, and the party should never be refused the right to comment, even in the case where it has chosen to be represented by a patent attorney. I think the Board should not speculate on what the party would say and which consequences this could have; if the submissions are inappropriate, the Board can stop the party, just as it would stop the representative.

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

The file wrapper can be found here.

Wednesday, 26 June 2013

J 4/13 – Late Payment Due To Premature Delivery


This decision deals with a request for re-establishment into the time limit for filing the renewal fee for the third year, which had fallen due on November 30, 2007.

The factual situation was as follows:

Renewal fee payments had to be made by the representative. An employee, Mrs Ariane C., was in charge of these operations. On her return from her holidays, in August 2007, she had informed her employer that she was pregnant and that she envisaged taking a maternity leave after the birth, which was expected to take place in December. After a premature delivery on October 14, 2007, she took her maternity leave and finally resigned on February 8, 2008. As her intentions were not clear before her resignation, it was difficult to find an adequate replacement strategy.

Mrs Valérie T., who had been in charge of the secretarial work for over ten years, fell seriously ill in February 2008. Her sickness finally led to her being made redundant on July 11, 2008. She was replaced by Jean-Louis B., who worked under the supervision of the representative.

The professional representative also invoked the fact that another IP law firm (Célanie) had been asked to help with the monitoring of time limits. A list of all the due dates was to be established under the supervision of a competent patent engineer of this law firm. Unfortunately, this patent engineer was unable to warn the professional representative on the November 30 time limit, probably because the list was established in chronological order.

The EPO expressed reservations on the admissibility and allowability of the request and invited the representative to comment on the objections within two months. As no response was received, the request for re-establishment was refused on October 30, 2009. The letter was received on November 3, 2009.

On March 17, i.e. well after the time limit for filing an appeal, the representative filed an appeal against this decision. He explained that it was during a meeting of the representatives of the applicant that he had learnt about the decision refusing re-establishment. As the acknowledgement of receipt had not been signed by a person entitled to do so, the appeal was filed in time. As an auxiliary request, he filed a request for re-establishment into the time limit for filing an appeal.

Here is how the Legal Board of appeal (LBA) handled this case:

*** Translation of the French original ***

Admissibility of the appeal

[1.1] The impugned decision is dated October 30, 2009. Pursuant to R 126(1), first sentence, it has been notified by means of a registered letter on November 3, 2009. Assuming a regular notification, the time limit for filing an appeal expired on January 10, 2010 (i.e. Ocober 30, 2009 + 10 days + 2 months, R 126(2) in connection with A 108, first and second sentences). The notice of appeal (completed by the statement of grounds for appeal) was received at the EPO on March 17, 2010, i.e. well beyond the legal two-month time limit. The same holds true for the appeal fee, which has been paid on March 18, 2010. Thus in principle the appeal is deemed not to have been filed (A 108, first and second sentence).

[1.2] In his notice of appeal, the representative explains that the acknowledgement of receipt had been signed by Mrs M., an employee of the Delpharm company, and not of the Gefib law firm, to which the decision of refusal had been sent and which was located in the same building as the Delpharm company. Mrs M. was not entitled to sign acknowledgements of receipt on behalf of the Gefib law firm but had to send the postman to the Gefib law firm where the registered letter was to be received. A corresponding declaration on behalf of Mrs M. was filed.

[1.3] In view of the explanations and the declaration under consideration, [the Board] has to accept that the notification was deficient.  

[1.4] Pursuant to R 125(4) “the document shall be deemed to have been notified on the date established by the EPO as the date of receipt”. Thus the LBA has to establish when the decision to refuse the request for restitution in integrum was actually received by its addressee. As the acknowledgement of receipt, which normally establishes this proof, is not regular, [the Board] comes to the conclusion that Mr B., who is the professional representative to whom the communication was to be sent (R 130(1)), was informed of the letter on February 4, 2010, as he had admitted (cf. notice of appeal […]).

[1.5] As the notice of appeal was received on March 17, 2010, and the appeal fee paid on March 18, 2010, the appeal has been filed within the two-month time limit under A 108, first and second sentence. As the statement of grounds of appeal was annexed to the notice of appeal and received on the very same day, the statement has, therefore, been received within the four-month time limit stipulated in A 108, third sentence.

[1.6] Thus the appeal is admissible.

Request for restitutio in integrum

Admissibility of the request for restitutio in integrum

Date of the removal of the cause for non-compliance (R 136(1), first sentence)

[2.1.1] According to the established case law of the Boards of appeal (see e.g. J 7/82 and T 428/98), the cause of non-compliance is removed on the date on which the person in charge of the patent application (in the present case: the duly authorised professional representative) realizes that the time limit has not been met. In the present case, this is the receipt of the communication of loss of rights dated July 4, 2008, which has made the professional representative pay the taxes that had fallen due, i.e. complete the “omitted act”. This means that the dates that could possibly trigger the two-month time limit under R 136(1), first sentence, are on or after July 5-6, 2008 – the date on which the communication of loss of rights was received – and before or on July 21, 2008, the date on which the due taxes were paid, i.e. the date on which the “omitted act” was completed.

[2.1.2] As the professional representative has filed a request for restitutio in integrum together with the corresponding grounds and paid the fee for restitutio in integrum on August 26, 2008, the two-month time limit  mentioned above has been respected, irrespective of which hypothesis is retained.

[2.1.3] Thus the request for restitutio in integrum is admissible (A 122(2), first sentence, in connection with R 136(1) and R 136(2), second sentence).

[2.1.4] In addition to that, although this is not decisive here, the Board wishes to emphasize that the fact that the EPO sends a communication pursuant to R 51(2) and establishes its date of receipt cannot constitute, as such, the date of “removal of the cause for non-compliance”. The latter date is established based on the factual elements of the case under consideration. The removal of non-compliance is a factual question that has to be decided on a case-by-case basis (see the decisions cited above, point [2.1.1]). On the other hand, contrary to what has been asserted by the professional representative, the pure and simple application of the fictitious delay of notification  (the 10-days-rule), in the present case, to the communication of the loss of rights for calculating the two-month time limit pursuant to R 136(1), first sentence, is legally wrong and would go against the established case law of the Boards of appeal.

Allowability of the request for for restitutio in integrum

Requirement of due care

[3.1.1] According to A 122(1), the applicant or, as the case may be, its professional representative has to show that it was unable to observe a time limit vis-à-vis the EPO in spite of all due care required by the circumstances having been taken.

[3.1.2] According to the established case law of the Boards of appeal, the facts of each case have to be examined as a whole, as they were before the expiration of the time limit, in the present case between November 2007 and June 2008. In other words, what is to be examined in order to determine whether “all due care required by the circumstances” is exclusively the circumstances as they were during that period.

[3.1.3] Following the absence and the departure of Mrs Ariane C., the law firm of the professional representative has implemented three levels of supervision of time limits:

(a) The replacement of Mrs Ariane C. by Mr B. the younger;

(b) the use, under these particular circumstances, of the additional help of an outside IP law firm, the Célanie law firm;

(c) the supervision of the time limits by the Benech law firm, which had remained in direct contact with the applicant.

[3.1.4] Concerning point (a):

The replacement of Mrs Ariane C. by a person that was “equally qualified”, i.e. Mr. B the younger, was said to be one of the measures establishing that all due care required by the circumstances had been taken. However, [the applicant] has not indicated or proven the date of replacement. It appears that it occurred quite some time after the time limit had been missed. In this context the Board notes that no evidence has been filed for the asserted facts, such as declarations or affidavits of the persons concerned and material elements.

[3.1.5] Concerning point (b):

The role of the Célanie law firm in the supervision of the time limits is unclear. It is not sufficient to just mention another law firm and to supply a CV of its manager. Point 16 of the statement of grounds of appeal mentions a competent patent engineer who had failed in his task. No declaration on his behalf concerning the proceedings he had supervised was filed. Generally speaking, as already indicated above, all the facts have to be justified by means of declarations or affidavits of the persons concerned. No such documents have been filed, even after the Board had expressly asked for such documents in its communication.

[3.1.6] Concerning point (c), it is true indeed that the Benech law firm has informed the Gefip law firm of the renewal fee to be paid before November 30, 2007. However, this warning has not had any effect, for reasons that have not been set forth.

[3.1.7] Finally, in point 14 of the statement of grounds of appeal it is said that the professional representative has done some supervision work, but no explanation or evidence whatsoever has been provided as to the concrete mode of supervision.

The “isolated mistake”

[3.2.1] According to the appeal, Mrs T. had been performing her duties as an assistant for ten years. In the present case, she has not carried out the task that had been entrusted to her, i.e. filing the cheque at the bank. This was said to be an isolated mistake made  by an assistant. This mistake was explained by the fact that she had fallen ill in Feburary 2008 and had been made redundant in July 2008. It was asserted that the instability and weakness caused by her sickness probably led her to make that mistake, which she had never made before.

[3.2.2] However, Mrs T. was said to have received the instruction to pay the taxes as soon as the communication was received on January 8, 2008. She has fallen ill in February 2008, i.e. one month after her “isolated mistake”. The Board cannot help but note a lack of coherence of the facts. On the other hand, point 19 of the statement of grounds of appeal asserts in regard of the deposit of the cheque at the bank that “the enclosed slip had already been filled in” and that “[t]he other payments entrusted in January … had been made”. These assertions are not supported by any evidence although the Board has expressly asked for the corresponding documents to be filed.

[4] In view of the above, the Board can only conclude that the request for restitutio in integrum is not allowable (A 122(1), together with R 136(2), first sentence). Thus the appeal has to be dismissed.

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

The file wrapper can be found here.