T 689/09 – Not Subject To Change

The present decision deals with an appeal filed by a patent proprietor whose patent had been revoked by the Opposition Division (OD).

The notice of appeal was worded as follows:

The opponent challenged the admissibility of the appeal.

[1.1] According to R 99(1)(c) EPC 2000, which applies in the present case, the notice of appeal shall contain “a request defining the subject of the appeal” (emphasis added by the Board).

This requirement pertains to one of the main functions of the notice of appeal in defining an appellant’s initial request, see the explanatory remarks for R 99 in the Special Edition 5 of the Official Journal 2007: “Revision of the European Patent Convention (EPC 2000), Synoptic presentation EPC 1973/2000 - Part II: The Implementing Regulations”:

“[the] requirement of R 99(1)(c) EPC 2000 takes into account that the appellant’s initial request - according to the case law of the Enlarged Board of Appeal (see G 9/92, G 4/93 and G 1/99) - defines the subject of the appeal and thereby the framework of appeal proceedings.”

[1.2] R 99(1)(c) EPC 2000 revises corresponding R 64(b) EPC 1973, according to which the notice was required to include “a statement identifying ... the extent to which amendment or cancellation of the decision is requested” (emphasis added).

The above-mentioned explanatory remarks state that that requirement has been moved to R 99(2) EPC 2000 which defines the statutory contents of the statement of the grounds of appeal. This revision makes allowance, as expressly stated in the explanatory remarks, for the case

“where the appellant is the patent proprietor [and] the amended claims are ... filed with the statement of the grounds for appeal ... [I]t is only then that the precise nature of the requested amendment of the decision impugned becomes apparent”.

That situation applies to the present case as is clear from the opening paragraph of the notice of appeal: It is the proprietor who gives notice against the decision to revoke his patent […].

In view of the explanatory remarks to R 99(1)(c) and (2), the notice of appeal need not indicate the precise nature of the amendment of the decision to be included in the statement of the grounds of the appeal, i.e. it is sufficient that the claims now being pursued by the appellant proprietor are only put forward in the statement of the grounds of appeal, as indisputably happened in the present case as well. Insofar the revised rules confirm the existing practice.

[1.3] What then does R 99(1)(c) require the notice of appeal to state in the present case?

The explanatory remarks give the following general guidance (in addition to that cited above […]):

“As a rule, the notice of appeal should already clarify whether the decision under appeal is contested as a whole or only partially, and define the extent of the issues raised in the appeal proceedings”.

[1.4] The interpretation of “subject of the appeal” as used in R 99(1)(c) has been addressed by previous decisions.

Decision T 1108/08 [1], without detailed reasoning, simply equates it with the requirement of identifying the extent to which cancellation of the [impugned] decision is requested […]. Given the wording of R 99(2) referring to the “extent to which [the impugned decision] is to be amended”, it has to be presumed that the deciding Board of T 1108/08 did perceive a difference between the “amendment” and the “cancellation” of a decision and realised that only the “extent of the amendment” requirement had been moved from R 64(b) EPC 1973 to R 99(2). It may have inferred from the explanatory notes […] that the “subject of the appeal” still encompasses the “extent of cancellation” requirement. This latter conjecture is somewhat tentative as the explanatory notes - apart from not being legal provisions themselves - use a different formulation, “extent of issues”, which may refer to a separate, additional or alternative, requirement, but could be synonymous with the “whole or partial” contesting of the impugned decision.

[1.5] The question is further analysed in great detail by decision T 358/08 […]. There the deciding Board established that the Implementing Regulations themselves or the supplementary means of interpretation, such as the “Travaux Préparatoires” to R 99 provides little information as to the exact meaning of the term “subject of the appeal”, apart from the fact that no significant changes were intended by the legislator to the existing practice. On the contrary, the changes merely reflect and thus confirm the development of the case law, in particular the possibility to defer the filing of new claims forming the basis of the appeal to the grounds of appeal (see points [1-5], in particular point [5]:

“the Board concludes that the change in the wording in the Implementing Regulations has not altered the previous law as to the requirements of either the notice of appeal or the statement of grounds of appeal as regards the nature of the appellant’s requests.”

[1.6] This latter statement of the deciding Board of T 358/08, taken together with its finding that even the provisions of the previous R 64 EPC 1973 concerning the required extent of cancellation/amendment were “somewhat toothless” (see point [2.4]) results in the finding that an appeal statement worded

“we hereby appeal against the decision of the OD ... we ask that the decision … be set aside and the patent maintained” is to be treated as a request defining “the subject of the appeal”, see point [5.1].

Otherwise, the deciding Board of T 358/08 declined to give a positive definition, stating that “it is not necessary for the Board to say precisely what it does mean”, see point [4.12].

Nevertheless, the Board found that a possible interpretation of R 99(1)(c) and (2) for the purposes of a practicable system should be made with an eye to the usual forms of orders made in appeal decisions, in the sense that the notice of appeal need only imply the first part of the order as desired by the Appellant, namely the setting aside of the impugned decision. The next part of the order that, in the Appellant’s view, should replace the order of the first instance (here the form in which the patent is to be maintained) may then appear in the grounds at the latest.

[1.7] The preparatory materials point to certain decisions of the Enlarged Board as explanation for the requirement of identifying the “subject of the appeal”. These decisions base their ratio decidendi on the generally recognised procedural principle of party disposition (Antragsgrundsatz, ne ultra petita) governing the appeal proceedings under the EPC, see G 9/92[1]. Taking the explanatory notes to the revised rules at their face value, it appears legitimate to consider R 99(1)(c) to be an expression of this principle. As such, it is not a requirement of form but of substance. It does not matter in what form the subject of the appeal is identified, as long as it is clear. The meaning of this principle is that the appeal can not extend to issues that the appellant himself did not wish to be a subject of the appeal, nor can the extent of the rights be decided beyond the extent requested.

On this basis, this Board interprets the “subject of the appeal” (Beschwerdegegenstand, l’objet du recours) to pertain to the substantive legal effects in general that are sought to be eliminated or achieved through the appeal (and essentially corresponding to the legal effects achieved by the impugned decision), keeping in mind that the “extent” of these legal effects need only be specified later.

Thus the notice of appeal must assist in identifying those legal issues which may be treated and decided on during the appeal proceedings. In the Board’s view it suffices if the Board and any other party can deduce in some way from the information in the notice of appeal what general legal effects are sought to be achieved by the appeal, including further by implication, if necessary, those legal effects which are necessary for achieving the desired legal effects.

[1.8] This interpretation is also consistent with the possibility that an impugned decision is only partially contested or the extent of the issues raised in the appeal is limited when compared to the legal effects of the impugned decision, for example where the decision has several independent legal effects, see decisions J 27/86 and T 420/03.

The board notes that it is also aware of case law, according to which the distinction between different legal effects of a decision also falls under the “extent to which the impugned decision is to be amended” pursuant to R 99(2), see T 1382/08 [8]. However, this approach leaves the notion of the “subject of the appeal” even more diffuse and elusive.

[1.9] The general legal effect of the decision under appeal is to revoke the patent. The effect of revocation can be inferred from A 68: the application or patent is deemed not to have had - from the outset, ab initio - any of the rights conferred under A 64 and 67 (to the extent it has been revoked). The Board notes that even though A 68 leaves room for the interpretation that the legal term “revocation” can also mean a partial loss of rights, i.e. encompass the maintenance in an amended form, in the overwhelming majority of the patent profession “revocation” is used exclusively to indicate full revocation, i.e. a complete loss of substantive patent rights. Thus the words “decision to revoke the patent” in the notice of appeal is also understood in this sense by the Board.

[1.10] As noted above, the proprietor does not need to indicate in the notice of appeal the extent to which the impugned decision is to be amended, since this “extent” is to be defined through the scope of the claims being pursued on appeal. Thus the “subject” of the appeal need only relate to a more general legal effect than the specific legal effects of a grant of a patent, being specific in the sense that the specific scope of protection - i.e. its “extent” in the sense of R 99(2) - is defined by the claims.

This leaves us with the notion that the subject of an appeal may be the general legal effect of grant, or as its legal counterpart, a revocation. However, staying on this general level of legal effects, the only conceivable general relief sought against the single and indivisible legal effect of the revocation is that the deemed loss of rights does not take effect, i.e. all the substantive rights residing in the patent as granted do persist as if nothing had happened.

From this follows that a statement of the proprietor that he wishes rights to persist, that is cancellation of the decision and its legal effect, should suffice.

[1.11] Nor need the proprietor expressly state that he seeks cancellation. This is implied in an appeal, given that cancellation is the only possible relief available to a proprietor appealing against a decision to revoke.

Accordingly, in the present case, the mere statement that the “decision ... revoking ...the patent” is appealed is enough to make clear to the Board and any other party that the appeal concerns at least the cancellation of the revocation. This is clear from the notice of appeal, even without perusing the decision under appeal or other documents of the file. For this reason the Board concludes that the notice of appeal meets the requirements of R 99(1)(c) EPC 2000.

See also T 407/02 [1.1], deciding that in case of revocation the declaration of appealing the impugned decision must be treated as a request for the cancellation of the decision in its entirety (on the basis of R 64(b) EPC 1973).

[1.12] In light of the above, the Board is satisfied that the subject of the appeal has been properly identified, so that the appeal goes beyond an empty statement of appeal against some undefined legal effect.

Insofar the Board need not address the possible consequences of the wording of R 99 on existing case law, nor the question whether it is permissible to identify the subject of the appeal for the purposes of R 101(1) in light of the decision under appeal.

That said, the Board concurs with the findings of T 358/08, i.e. that it is not apparent that the legislator would have intended any significant change to the developed procedural requirements of appeal. Though the Board in principle agrees with the [opponent] that in theory, a more strict practice could also be justified by the wording of the applicable rules, it does not see the need to depart from the established, admittedly appellant-friendly approach with respect to the admissibility of the appeals.

[1.13] As all other requirements of A 108 and R 99 are met the Board finds that the appeal is admissible.

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T 761/08 – Beware Of Disclaimers

Disclaimers are a very dangerous way of overcoming patentability objections, as the present case shows once more. The appeal is against the decision of the Opposition Division (OD) to maintain the patent in amended form.

Claim 1 of the main request on file read:

A process for separating mixtures which comprise oxygen and argon by cryogenic distillation in a distillation system comprised of at least one argon separation rectification column that produces an oxygen stream and an argon stream from a vapour feed stream consisting essentially of oxygen and argon and wherein an argon rich liquid inventory is returned to the column after an interruption of flow of said feed stream into the argon-separation column,

characterised in that during an interruption of flow of said feed stream into the argon-separation column, argon-rich liquid inventory in said column is recirculated, prior to and during re-startup of said column, to a separation section of said column that is above the location of withdrawal of said inventory;

excluding processes in which said liquid inventory is collected from the sump of the argon-separation column or, when the system has two argon-separation columns, jointly from the sumps of each argon-separation column of the system and is recirculated through the or each of the columns.

The opponent pointed out that the disclaimer was drafted too broadly.

[2.1] [Document] D1 constitutes prior art under A 54(3) for all of the contracting states DE, FR & GB for which the patent has been nationalised […].

This document […] describes: a process for separating mixtures which comprise oxygen and argon by cryogenic distillation in a distillation system comprised of at least one argon-separation distillation column […] that produces an oxygen stream and an argon stream from a feed stream […] consisting essentially of oxygen and argon and wherein an argon rich liquid inventory […] is returned […] to the column […] after an interruption of flow of said feed stream into the argon-separation column, wherein during an interruption of flow of said feed stream […] into the argon-separation column […], argon-rich liquid inventory […] in said column is recirculated, prior to and during re-startup of said column, to a separation section of said column that is above the location of withdrawal of said inventory.

[2.2] Thus, apart from the disclaimer, the subject-matter of claim 1 is known from D1. Since D1 is prior art under A 54(3) it is permissible to restore novelty by using a disclaimer (see G 1/93 [2.1]). However, the disclaimer should not remove more than is necessary to achieve this (see G 1/93 [headnote 2.2]).

NB: The reference to G 1/93 appears to be erroneous and should be to G 1/03.

[2.3] The disclaimer added to claim 1 reads: “excluding processes in which said liquid inventory is collected from the sump of the argon-separation column or, when the system has two argon-separation columns, jointly from the sumps of each argon-separation column of the system and is recirculated through the or each of the columns.”

The board agrees with the [patent proprietor] that the disclaimer is split into two parts. The first part refers to a single argon column configuration as shown in figures 3 and 4 of D1. The second part refers to a system having two argon-separation columns as shown in figure 5 of D1. Furthermore, the [opponent] has explicitly confirmed this interpretation in writing […].

[2.4] The disclaimer also does not remove any more than is necessary to restore novelty with respect to D1 since it is based on the embodiments disclosed in figures 3,4 and 5 of D1.

[2.5] The board agrees with the [patent proprietor’s] view that the system in D8 comprises a denitrogenisation column as opposed to an argon-separation column as required by claim 1.

[2.6] Thus, with respect to D1 the disclaimer meets all the requirements laid out in G 1/03.

[3.1] The [opponent] has also presented several lines of argument to show that, despite the addition of the disclaimer, the subject-matter of claim 1 is still not new with respect to D1. The board does not find any of these arguments convincing. […]

[4.1] As regards D10, this document shows that liquid from the sump of the argon-separation column always contributes to the re-circulated liquid inventory. Figure 4 of this document discloses: a process for separating mixtures which comprise oxygen and argon by cryogenic distillation in a distillation system comprised of at least one argon-separation rectification column […] that produces an oxygen stream and an argon stream from a feed stream […] consisting essentially of oxygen and argon and wherein an argon rich liquid inventory from trough […] and the sump is returned […] to the column […] after an interruption of flow of said feed stream […] into the argonseparation column, wherein during an interruption of flow of said feed stream […] into the argon-separation column […], argon-rich liquid inventory in said column is recirculated […] prior to re-startup of said column, to a separation section […] of said column that is above the location of withdrawal of said inventory.

[4.2] Thus, disclaimer apart, the only contentious feature is whether liquid is also re-circulated to the column “during re-startup of said column”.

[4.3] In order to assess this it is necessary to define the term “re-startup”. According to the description of the contested patent […], “the re-startup process is over when the column reaches its steady state conditions” and […] the sidearm column “approaches steady state conditions” during the startup process. A process interruption is defined […] as being something which causes the vapour stream […]to be reduced or cease flowing altogether.

Thus, the patent refers to three distinct phases: steady state, process interruption and restartup. In the event of an interruption and subsequent re-startup, the system would therefore pass through the following cycle: steady state conditions, interruption, re-startup and finally back to steady state. Accordingly, the re-startup phase is all of the period between the end of interruption and reattainment of the steady state. In view of this, the board considers that the re-startup phase commences as soon as the process interruption is terminated by re-establishing flow in the vapour feed line to the argon column.

[4.4] D10 […] states “Lorsque la vanne est fermée, on poursuit le redémarrage comme décrit plus haut” which indicates that the re-startup phase of D10 is “continued” rather than “effected”. [… I]t is indicated that the condenser is started (“on démarre le condenseur”), and only then is a progressive closing of the valve undertaken (“on referme progressivement la vanne”). In order for the condenser to function vapour must be flowing through the feed stream […]. Thus, the valve […] is still open and allowing argon-rich liquid to be recycled to the upper part of the distillation section […] when the condenser starts working and vapour starts flowing through line […].

[4.5] The progressive closing of the valve […] is accompanied by a progressive opening of the valve […] in order to direct an increasing flow of liquid to the low-pressure column 5, thereby maintaining the liquid level N2 in the sump of column 2 constant […].

[4.6] The [patent proprietor’s] argument that the supplemental return in Figure 4 is only to reduce the level of liquid in the column from the stoppage level N3 above the vapour feed from the main air separation system to a level N2 below that feed in order to permit re-startup of the column is not entirely correct.

[4.7] The process according to D10 comprises a pre-startup stage whereby the liquid level in the sump is reduced from N3 to just below the distributor plate to free up the mouth of the vapour feed line […], allowing vapour to be fed into the column and the condenser to be restarted. The point at which the vapour feed into the column in D10 is resumed corresponds to the beginning of the re-startup phase in the contested patent as outlined above.

[4.8] However, since both valves […] are closed and opened “progressively”, in the manner described above, after the condenser has been restarted by terminating the interruption of the vapour supply through line 27, it must also be that liquid is re-circulated to the column at least during part of the re-startup phase of said column.

[4.9] The notion of a progressive reduction in recirculated liquid inventory is also mentioned in the contested patent […] where it is stated that

“Moreover, as the sidearm column advances from being shut-down to its normal operating conditions, the amount of liquid inventory being recirculated is progressively reduced.”

[4.10] Consequently, the only difference between the subject-matter of claim 1 and that of the process according to figure 4 of D10 lies in the disclaimer. Therefore this feature alone establishes novelty.

[4.11] In this case, since D10 is prior art under A 54(2), it is also inevitably relevant for the question of inventive step.

[4.12] However, according to G 1/03 [headnote 2.3]:

“A disclaimer which is or becomes relevant for the assessment of inventive step or sufficiency of disclosure adds subject-matter contrary to A 123(2).”

[4.13] Thus, with respect to D10, the disclaimer does not meet the provisions of A 123(2) and claim 1 of the main request is not allowable.

The Board remitted the case to the OD for further prosecution on the basis of the auxiliary requests.

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R 16/10 – He Once Was One of Us

This petition for review concerns decision T 699/07 (also mentioned in a previous post).

It was based on two alleged deficiencies:

1. that the Board had misinterpreted the patent proprietor’s submissions, and
2. that a Board member was partial within the meaning of A 24: As a matter of fact, the chairman of Board 3.3.01 was employed from January 1986 to January 1991 as a patent specialist by Rhone Poulenc Agrochimie, which is the legal predecessor of the patent proprietor, Bayer CropSciences SA. Exhibits were filed providing evidence of his qualification as a European representative and of his European patent filing activities as representative of Rhone Poulenc Agrochimie.

The Board dismisses the first ground as being equivalent to a request for declaring the Board’s reasoning insufficient or wrong, which is not the aim of review proceedings. It then deals with the second ground:

[2.3] As to the second ground of the petition, according to A 112a(2)(c), the partiality of a member of a Board of Appeal may be a ground for a petition for review insofar as a member took part in the decision in breach of A 24(1), or despite being excluded pursuant to a decision under A 24(4).

[2.3.1] The petitioner submits that the wording of A 24(1):

“Members of the Boards of Appeal or the Enlarged Board may not take part in a case in which they have any personal interest, or if they have previously been involved as representatives of one of the parties, or if they participated in the decision under appeal.”

includes not only the specific situation where one of the members has represented a party in the case in question but also the general situation where a member has previously acted as representative of that party in any matter.

[2.3.2] However the petitioner’s interpretation of this article does not match that of a normal reader reading it in its proper context.

There was only a slight amendment of the English text in EPC 2000 by which the words “may not take part in any appeal if they have any persona1 interest therein” were replaced by “may not take part in a case in which they have any persona1 interest”. This amendment shows that the previous English wording was not completely satisfactory compared to that of the other two languages, which were not amended.

While the amended English text remains less clear than that of the other two versions, when paragraph 1 is read as a whole, it becomes unambiguously clear that it deals with three separate cases each governed by the words “in a case in which”.

Moreover the reference to “previously been involved” is such that the “involvement” is immediately understood by the reader as referring to the “case in which” and no other case.

[2.3.3] Further, this paragraph cannot be given a different meaning in English to that in the two other languages.

It is clearly stated in the German and French versions (“in der sie vorher als Vertreter eines Beteiligten tätig gewesen sind”; “s’ils y sont personnellement intervenus en qualité de- représentant de l’une des parties” [emphasis added by the Enlarged Board]) that the cause of exclusion relates to the involvement in the particular case in question and not to any past representation.

[2.3.4] Accordingly, the meaning of the English text of A 24(1) EPC taken as a whole, in its proper context and with respect to the text of the other two languages, is clear. No further investigation as to the intention of the legislators is necessary.

However, the Enlarged Board notes that A 24(1) EPC quickly met with the approbation of al1 the contracting States in the wording of EPC 1973, the travaux préparatoires showing that the authors were concerned with a similar rule as the then existing A 16 (now Article 18) of the protocol of the statutes of the Community Court of Justice (document IV/8221/61-F).

[2.3.5] As the petitioner made clear during the oral proceedings that it did not intend to base its petition on the second ground provided by A 24(1) it results from the above paragraphs that the composition of the Board complied with Article 24(1).

[3] The upshot is that the petition based on the alleged breach of A 24 (1) is also clearly unallowable.

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NB : This decision is also discussed on Le blog du droit européen des brevets.

T 2291/08 – Prima Facie

This highly interesting decision deals with a situation where the Opposition Division (OD) introduced a new ground of opposition (A 100 (c)) of its own motion. The Board finds that it should not have done so, in particular because this ground had already been examined - and found not to be relevant - in an appeal against the refusal of the underlying application by the Examining Division (ED). There are also some very interesting statements on a possible case of partiality of an OD member and on how ODs should (or should not) be composed.

[2] The contested patent has been revoked for containing subject-matter that extends beyond the content of the application as originally filed (A 100(c)). This ground had not been raised by the Opponent in the notice of opposition, but had been introduced into the proceedings by the OD exercising its discretion under A 114(1). The question facing the Board in the present case is whether the OD had exercised its discretion correctly.

[3] Whilst the OD is entitled, pursuant to R 81(1) to examine grounds for opposition not invoked by the opponent, the circumstances in which an OD should consider raising a ground of its own volition are set out in the decisions of the Enlarged Board (EBA) G 9/91 and G 10/91. The view held by the EBA is that the notice of opposition, which includes a statement of the grounds on which the opposition is based (R 76(2)), has the purpose of establishing the legal and factual framework within which the substantive examination of the opposition in principle is to be conducted. This was considered important in order to give the patentee a fair chance to consider its position at an early stage of the opposition proceedings (see G 9/91 [6]).

[4] The EBA emphasised that consideration of grounds not covered in the notice of opposition is an exception to the above principle, and should only take place where prima facie there are clear reasons to believe such grounds are relevant and would in whole or in part prejudice the maintenance of the patent (G 9/91 [16]).

[5] The [patent proprietors] in the present case argue that the ground under A 100(c) vis-à-vis A 123(2) was not prima facie relevant, and thus should not have been admitted.

[6] It is relevant here that the application for the contested patent had initially been refused, and the decision appealed and heard as T 1190/01 before a different board of appeal from the present one. The Board in T 1190/01 [2] concluded that the disputed claim met the requirements of A 123(2).

[7] It is well established case law of the boards of appeal that a decision taken in examination appeal proceedings is not binding in subsequent opposition proceedings (see Case Law of the Boards of Appeal of the EPO, VII.E.1, penultimate paragraph). This means that, contrary to the suggestion of the [patent proprietors], the board’s decision concerning A 123(2) is not res judicata and was open to challenge, for example by an opponent citing A 100(c) in the notice of opposition; this would be comparable to the situations arising in T 1099/06 and T 167/93. The question though is whether the OD was right to raise the ground later of its own volition.

[8] The message of the EBA in G 9/91 and G 10/91 is clear; as stated above, new ground can only be introduced by an OD in exceptional circumstances and only when prima facie relevant. The [patent proprietors] are correct in stating that the expression “prima facie” means “at first sight” or “on the face of it”. This indicates that it should not be necessary to conduct a detailed examination of the new ground before determining whether or not it is relevant.

[9] The Board in T 1190/01 concluded that the amendments met the requirements of both A 123(2) and A 84. This is expressly stated in paragraph [2] of the Reasons for the Decision, which gives page 7, lines 28 to 30 as the basis for the amended feature “cooling at >10°C/s down to 480 and 750°C”. The cited passage in the description of the original application is part of a discussion about the different types of microstructures that can be achieved, and states that a “cooling speed of >10°C/s in the temperature interval 750-480°C encourages the formation of non equiaxed ferrite grains”. Thus, a cooling rate of >10°C/s from the hot deforming temperature down to the defined temperature range (Tavv), where coiling takes place, is not expressly defined in the original application. Nevertheless, examples of cooling rates >10°C/s down to this temperature range are disclosed (see for example Figure 2), with the maximum being 80°C/s. Although the claim does not now define an upper limit for the cooling rate, it might be argued that an appropriate value in practice would be readily apparent to the skilled person.

[10] The OD was also of the view that there was no support for the amendment of the claim to include the feature of “maintaining the austenite grain dimensions larger than 150 µm” in the hot deforming step. As indicated by the Board in T 1190/01, this feature is disclosed in the original application on page 7 (lines 30 to 31), where it is said to encourage the formation of non equiaxed grains. It would seem that this feature is indeed presented as being of relevance to all the steels contemplated by the application.

[11] Regarding claims 2 and 3, the OD was of the view that the omission of the expressions “as cast” and “a continuous pattern of the stress-strain diagram of the material” amounts to an unallowable generalisation contrary to A 123(2). The [patent proprietors] argue that the invention only concerns as cast structures […], and hence the claimed subject-matter must also relate to such steel strip, whether or not it is explicitly defined. The feature of “a continuous pattern of …” describes a property inherent to the steel product, hence failure to mention of this property neither adds nor detracts from the claimed subject-matter. There are thus plausible reasons why these amendments may be allowable.

Summary

[12] It is of no concern here whether, after detailed consideration, a claim has been amended to contain added subject-matter, but rather whether, given the exceptional circumstances of the late stage of the proceedings, the alleged objection is prima facie highly relevant.

[13] Given that the previous Board had expressly stated, together with a reference to a passage in the original application, that the amendments find support, and in addition, when the application as a whole is considered it is also plausible that the amended features were disclosed, it cannot be said that the allegations under A 100(c) are prima facie highly relevant.

[14] Consequently, the Board is of the view that introduction of the ground for opposition under A 100(c) by the OD of its own volition is contrary to G 9/91 and G 10/91 and, given the circumstances of the present case, constitutes a procedural violation.

[15] Since this was the sole ground cited by the OD for revocation of the patent, it is serious and justifies reimbursement of the appeal fee (R 103(1)(a)).

Main and First Auxiliary Requests

[16] The [patent proprietors] request that the decision under appeal be set aside and the granted patent (main request) or the claims filed with the grounds of appeal (first auxiliary request) be examined with respect to the grounds cited by the Opponent, without remittal of the case to the OD.

[17] Grant of the patent was opposed for lack of novelty and inventive step (A 100(a)) and for insufficient disclosure (A 100(b)). None of these grounds has been dealt with by the OD, and it is not the function of an appeal board to decide upon issues arising for the first time during the appeal proceedings. The case can only receive procedurally correct treatment if it is remitted to the department of first instance.

[18] Consequently, the main and first auxiliary requests of the [patent proprietors] are not allowed.

Second Auxiliary Request

[19] The [patent proprietors] request that the decision be set aside and the patent as granted or amended according to the first auxiliary request be remitted to an OD having a different composition. The reason given by the [patent proprietors] for this request is that the first examiner of the OD had “manifested an incontestable negative attitude against the patentability of the invention”, and that this examiner was also the first examiner of the ED that had dealt with the contested patent.

[20] The mere fact that the view held by an examiner on any particular issue differs from that of a party is per se insufficient for requesting a change in composition. In addition, the appointment of examiners to an OD is primarily an administrative function for which the director of the relevant department of first instance is responsible; the boards of appeal are limited to merely reviewing a case to establish whether the requirement of impartiality has been fulfilled (see T 838/02 [8]).

[21] Nevertheless justice must not only be done, but it must be seen to be done, and it is well established case law of the boards of appeal that a suspicion of partiality or bias may be sufficient to invalidate a first instance decision (see Case Law of the Boards of Appeal of the EPO, 6th edition 2010, VI.J.3), even though in the vast majority of cases in which suspicion of partiality is raised, no actual bias is established (see T 900/02 [4]).

In the present case, the combination of the following facts cast serious doubt on the impartiality of the OD:

- the merits of the disputed amendment had already been decided by a board of appeal;

- the ground under A 100(c) which led to revocation of the patent had not been raised by the opponent, but was introduced ex officio by the OD;

- the same primary examiner had acted in both decisions under appeal.

Such doubts are sufficient to declare the impugned decision null and void ab initio.

In addition, there should be no ground for dissatisfaction with the conduct of the further proceedings in this case, such as might be if the same OD were to revoke again the patent, even after an impeccably conducted proceedings.

[22] For these reasons the Board considers it appropriate to recommend that the case be heard by an OD having a different composition.

[23] The present case gives grounds for questioning whether the current arrangement, in which the same examiner may be responsible for drawing up the search report, drafting the European search opinion, and then carries out the function of first examiner in both the examination and ODs, can be considered judicially fair.

In particular, opposition is an independent procedure and is not to be seen as a continuation or extension of the examination procedure (see G 1/84 [9] and G 9/91 and G 10/91). A 19(2) requires that at least two members of the ED are replaced, and that the first examiner of the ED cannot become the chairman of the OD. However, this does not prevent the same examiner from carrying out the primary task of examining in both examination and opposition, which may lead to a continuity of views that blurs the independence of the two procedures.

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T 79/08 – When Rods Spoil ... The Patent

This decision deals with an appeal of the patent proprietor after the Opposition Division (OD) had revoked its patent for lack of inventive step.

Claim 1 of the main request before the Board read:

A dispersion comprising non-melt-processible fluoropolymer particles having an SSG of less than about 2.225 in aqueous medium, said fluoropolymer particles comprising a core of high molecular weight polytetrafluoroethylene and a shell of lower molecular weight polytetrafluoroethylene or modified polytetrafluoroethylene, wherein at least about 1.5 weight % to about 20 weight % of said fluoropolymer particles comprise substantially rod-shaped particles having a length to diameter ratio of greater than about 5.

The Board discusses sufficiency of disclosure:

General considerations

[3.1] It is disputed between the parties whether the feature relating to the content of rod-shaped particles was sufficiently disclosed.

[3.2] It is helpful to recall the development of the relevant arguments:

[3.2.1] During the proceedings before the OD and in the initial stages of the procedure before the Board this dispute focussed on the question of analysing the diagrams in order to count and measure the particles […].

[3.2.2] However in the latter stages, commencing with the submission of the Poggio affidavit the question of the calculations performed on the data retrieved from the counting was raised […].

[3.3] The guiding principle in the large body of case law developed with respect to A 83 EPC is that the skilled person should, after reading the description be able readily to perform the invention over the whole area claimed without undue burden and without needing inventive skill (cf. T 694/92 [5, final section].

[3.4] Accordingly in a first step it is necessary to examine whether the teaching of the patent in suit provides a disclosure of all relevant aspects relating to the determination of the content, expressed as weight %, of rod-shaped particles.

The amount of rod shaped particles - disclosure in the patent in suit

[4.1] According to […] the patent in suit the content of rod-shaped particles is determined as follows:

• Dispersions are prepared on substrates and images are obtained by scanning electron microscope;
• The images are visually inspected;
• Particles are hand counted;
• Counted particles are modelled as cylinders whose height is the long axis and whose diameter is the short axis;
• Particle dimensions are measured with a ruler in mm and converted to nm using the scale given on the SEM image.

This passage thus teaches only how to obtain the images and how to retrieve the data relating to particle dimensions form the images. There is no teaching here regarding the calculations to be performed on the data.

[4.2] In example 1 it is disclosed in relation to the determination of the content of rods […]:

• Typical particle shape is cylindrical with rounded ends;
• A hand count of 230 particles gave a distribution of long and short axis (depicted graphically in figure 4 of the patent in suit):

• Those particles having a ratio of long axis to short axis of greater than 5 comprised 10% by number of particles counted;
• Modelling these as cylinders gave a weight percent of these particles of 2.8 wt%;
• The rod-shaped particles had average dimensions of 900 nm of length and 68 nm of diameter;
• The average length of all particles was 413 nm and the average diameter was 183 nm (emphases of the Board).

Thus the report of this example provides the following information:

• The total number of particles considered (230)
• The proportion of these having a l/d ratio of greater than 5, i.e. rod-shaped particles;
• The weight proportion of these in these particles is reported (2.8 wt%). This language, in particular the use of “these” indicates that the weight percentage is based on the totality of particles analysed i.e. the 230 particles counted.
• The average length and diameter of the entire population of particles and of the rod-shaped particles.

[4.3] At this stage of the disclosure there is however no explicit statement relating to the calculations carried out in order to obtain the reported figure for weight proportion.

The OD understood from the examples of the patent in suit that the reported averaged values were to be used […]. This finding was not disputed by the patent proprietor either at the oral proceedings (OPs) before the OD or in its statement of grounds of appeal since, according to it submissions at the first OPs before the Board the significance thereof had not been appreciated […]. The Board however notes the diverging statement made in relation to the same issue at the second OPs before the Board at which the patent proprietor submitted that the reason for not raising this matter was that it had been assumed that everyone would realise that the reasoning of the opposition had been wrong […].

[4.4] As shown by submissions made by both parties during the appeal procedure, carrying out this calculation on the data provided in the patent in suit would yield results with varying degrees of agreement with the values reported […]:

− Based on the data given in example 1 a value diverging upwardly from that reported in the patent in suit would be obtained, i.e. 3.0 wt% instead of 2.8 wt% […];

− The data of example 2 would yield the same value as that reported in the patent in suit (1.9 wt%) […];

− Employing the data of example 4 would yield a value of 10.9 wt%, thus diverging downwardly from the value reported in the patent in suit (14.6 wt% […]).

[4.5] The patent in suit provides no prior art references relating to the determination of the weight percentage of particles of a particular morphology in such dispersions. This lack of any pertinent prior art references is consistent with the presentation of the patent in suit and the position of the patent proprietor that the realisation that the content of rod-shaped particles was critical was at the heart of the invention to which the patent in suit relates […].

[4.6] The argument of the patent proprietor […] that the skilled person would understand, on the basis of paragraph [0067] that only the individual method – “Method A” would lead to meaningful results not only fails to take account of the explicit teaching of the examples of the patent in suit which refer to the average values, but also advances no explanation as to why, despite the absence of any explicit reference to the properties of the individual particles in the patent in suit and apparently in direct contradiction to the explicit teaching of the examples in respect of the average values, the skilled person would assume that the individual values were to be used.

[4.7] Accordingly the Board can come to no conclusion other than that, based on the disclosure of the patent in suit itself, there is no sufficient disclosure of the manner in which the content of rod-shaped particles is to be determined.

[4.8] Accordingly the patent in suit cannot provide a basis for recognising sufficiency of disclosure (A 83).

[5] It thus needs to be investigated whether the skilled person, could by other means, e.g. by reference to common general knowledge, arrive at an understanding of how to determine this feature of the claim.

[5.1] As held in T 629/05 [4] in the assessment of sufficiency of disclosure the skilled person may use common general knowledge to supplement information contained in the application and may even recognise and rectify errors in the description on the basis of such knowledge, the central criterion being that it must be possible to reproduce the invention without any inventive effort and undue burden.

[5.2] It appears to be a matter of consensus between the parties that the skilled person would recognise an incoherence, in some cases, in the disclosure of the patent in suit between the reported contents of rod-shaped particles and those which emerge from the data reported relating directly to the properties of the particles (average dimensions).

[5.3] The question to be answered is whether the skilled person would on the basis of general knowledge be in a position to supplement the teaching of the patent in suit and so reconcile this incoherence.

[5.4] As already explained […] above there is no prior art identified in the patent in suit which could provide a basis for such a rectification.

[5.5] Regarding the general knowledge of the skilled person, the only evidence available is that provided by the various statements made during the procedure.

[5.6] The evidence provided by the patent in suit itself is that the inventor was not aware of the significance of the manner of calculating or even of a distinction between different methods. The statement of the patent proprietor at the first OPs is consistent with this […]. Interestingly the patent proprietor appears to have reviewed its position on this by the time of the second OPs […] when it was stated that the reason for not commenting on this was that it had been assumed that the skilled person would realise that the calculation on the basis of the average values was incorrect.

[5.7] According to the expert of the opponent - as reproduced in the Poggio affidavit it seems that it was also not realised prior to the first OPs before the Board that the manner of calculation, i.e. whether the particles were treated individually or collectively was of significance. On the contrary according to Poggio it appears to have been assumed that the two values were interchangeable […].

[5.8] At the first OPs the confusion over this matter was emphasised since the representatives themselves took positions at odds with the statements of their respective experts […] regarding the manner of calculation. This alone constitutes a strong indication that the skilled person would not have known from other sources which method was to be employed.

[5.9] The submissions of the patent proprietor at the second OPs […] that the divergences in the results reported in the patent in suit and those obtainable on the basis of the reported average values would reveal that the individual method, not the collective method was to be used relies on making an assumption for which no evidence has been advanced, namely that there are only two methods of calculation possible.

[5.10] On the contrary there is evidence that the matter is not as clear-cut as implied by the patent proprietor. This evidence is provided on the one hand by the diverging statements made by the patent proprietor with respect to the calculation method set out in the decision under appeal […] and by the Poggio affidavit according to which a hybrid calculation was employed in which the rod-shaped particles were treated individually but the entire population was treated collectively, employing average values.

[5.11] Thus the evidence provided by the submissions of the parties is that these experts were not even necessarily aware that the manner of calculating the content of rod-shaped particles was of significance, let alone that this had to be performed in a highly specific manner.

[5.12] The patent proprietor also argued that the skilled person would not only note that there was a divergence between the reported values for the content of rod-shaped particles and the value that would be obtained based on calculations employing the data reported but would also note that the magnitude of the divergence increased with higher contents of particles, understand the significance of this and thus come to the conclusion that it was necessary to employ the method of treating the particles individually rather than collectively.

Disregarding for the moment that this submission is irreconcilable with the statement made by the patent proprietor at the first OPs held before the Board that the significance of the calculation method as set out in the decision under appeal had not been appreciated […], it is the opinion of the Board that to arrive at such a conclusion, in the absence of any indication of pertinent general knowledge demands of the skilled person, a level of insight and understanding which approaches that required for inventive step. However the pertinent case law emphasises that the same level of skill is to be applied when the questions of sufficiency of disclosure and inventive step are considered (cf. T 60/89 [3.2.5]).

[5.13] Even accepting, for the sake of argument, that such insight would be within the range of normal, non-inventive ability of the skilled person, there remains the obstacle that the patent in suit itself provides no means by which the validity of such an insight could be tested. Raw data is provided only in the nature of images of extremely poor quality. In this connection it is recalled that the images provided by the then opponent during the opposition proceedings […] were considered by the patent proprietor to be of insufficient quality to allow analysis (counting of the particles) notwithstanding that these images appear to be significantly clearer and of higher quality than those contained in the patent in suit.

[5.14] Also complete repetition of the examples of the patent in suit does not provide a route - without undue burden - to clarify this aspect since doing so involves multiple stages, each of which is prone to error and thus any divergence could have one of a number of sources, no means being provided in the teaching of the patent in suit to exclude one or other source of error.

[5.15] Accordingly the patent proprietor has failed to show that the skilled person would be in a position to understand the cause of the varying degree of agreement between the reported values of rod content and those values that would be obtained on the basis of calculations performed on the data provided in the patent in suit, and having done so to rectify this based on either common general knowledge or the data in the patent in suit.

[5.16] Indeed the Board is aware that the entire foregoing section relies on making a key assumption - namely that the skilled person would identify the nature of the calculation as being the source of the divergences. This has in fact been assumed by both parties. However this assumption is in the Board’s view not valid. For example it takes no account of the possibility of alternative sources of error such as clerical errors in the patent in suit, or even errors in collating and analysing the data, e.g. instrumental errors.

[5.17] Thus it has not been shown that the skilled person would necessarily even realise that the calculation method was at the source of the divergences, let alone that the skilled person would be in a position to identify precisely the nature of the problem with the calculation method, how to correct it and, on the basis of the data in the patent in suit, confirm that this was in fact the correct calculation method.

[5.18] On the other hand, it is clear that the promise of the invention (PTFE dispersions of higher CCT) is only accessible via a reliable fulfilment of the crucial condition set out in claim 1, namely that: “at least about 1.5 weight % to about 20 weight % of said fluoropolymer particles comprise substantially rod-shaped particles having a length to diameter ratio of greater than about 5.” which in turn requires the preparation of a dispersion having the correct fraction of substantially rod-shaped particles. However, as shown above, the necessary information to achieve this is absent from the patent in suit.

[6] It is therefore concluded that the patent in suit does not provide sufficient information to allow the skilled person to reproduce the claimed invention. Nor is the skilled person in a position - without undue burden and without inventive effort - to make good this deficit. Accordingly it has to be concluded that the requirements of sufficiency of disclosure are not satisfied.

As the claims of all request rely on the definition of the content of rod-shaped particles, this objection applies to all requests.

Accordingly none of the sets of claims on file meets the requirements of A 83. […]

The appeal is dismissed.

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T 1077/06 – The Right To Be Heard, Again

[1] Against the grant of the patent in suit four oppositions were filed. The four opponents cited in their respective notices of opposition thirty documents, D1 to D30, which were presented in a consolidated list submitted by the patent proprietor as annex to a letter dated 6 November 2003.

[2] With additional submissions opponents 01, 02 and 03 filed nine additional documents. The patent proprietor added these documents to the already existing list as documents D31 to D39 and provided an updated list […]. In addition, opponent 02 […] filed a first “Research report Product Development”, referred to as document D46 […].

[3] On page 2 of his letter of 6 May 2005 the patent proprietor argued:

“Documents D31 to D39 and the test results submitted by opponent 02 were filed too late, because there were not filed within the opposition period. It is requested not to admit these documents and test results into the opposition proceedings.”

This passage is followed by a statement of why the Opposition Division (OD) should allow this request. With the same letter the patent proprietor filed four additional documents (D40 to D43). Document D44 was cited by opponent 04 in its note of Opposition […] and was subsequently referred to in the proceedings by this number.

[4] In a communication […] annexed to the summons to attend oral proceedings (OPs), the OD informed the parties that they considered the newly filed documents to be prima facie relevant and therefore to be admissible into the proceedings. However, they continued that “[t]he admissibility of the new evidence will be further discussed at the OPs.”

[5] OPs were scheduled for 28 to 29 March 2006. The date for the parties to make final submissions in preparation for the OPs was set to be no later than two months before this date.

[6] With letter dated 25 January 2006 opponent 02 filed a second “Research report Product Development”, referred to as document D47 […]. With letter dated 27 January 2006 the patent proprietor filed a new document D45.

[7] According to the minutes of the OPs before the OD, […] at the OPs the Chair announced “ … that all citations D1 through D27, D29 through D41 and D44, and all the experimental evidence provided by 02 were admitted into the proceedings as they were regarded prima facie as particularly relevant (pursuant to A 114)(1).” The minutes do not indicate that the parties were heard on this issue before the Chair announced this decision.

[8] After the announcement the Chair summarized the parties’ requests. The patent proprietor’s request not to admit documents D31 to D39 and D46 […] was not mentioned. The minutes state that all parties confirmed their requests […]. Only after the OD had decided that Patent proprietor’s main request before it contravened the requirements of R 57a, did the patent proprietor protest against the admittance of the late filed documents. The discussion was focussed on the admittance of opponent 02’s second “Research report Product Development” D47. The [corresponding] sentences […] of the minutes read:

“The admission of the experimental data of 25.01.2006 thus was not considered as a procedural violation by the OD but only as its prerogative under A 114. The Patentee was informed of his right to appeal to a higher instance.”

[9] The decision under appeal deals in point (I) with the “admissibility of documents D31-D43, D45 and technical evidence of 25.01.06 by 02.

In point (I)(1) of its decision the OD deals with patent proprietor’s arguments submitted with his letter dated 6 May 2005.

In point (I)(2) of its decision the OD comments on the arguments submitted by the patent proprietor at the OPs after the decision was announced by the Chair that D1 through D27, D29 through D41 and E44, and all the experimental evidence provided by O II were admitted into the proceedings.

In point (I)(3) of its decision the OD expresses its surprise that the patent proprietor objected to the admittance of opponent 02’s second “Research report Product Development” […] at such a late stage of the procedure, as this would have been possible earlier, firstly directly after the filing of this document and secondly at the OPs when the Chair summarised the parties’ requests. Finally it is remarked that the document has “not been considered for the present decision.”

A reasonable interpretation of this part of the decision is that the parties were not heard by the OD on this issue at the OPs before the Chair announced the decision to admit, among others, documents D31 to D39, D46 and D47 into the procedure.

[10] According to A 113(1) the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. This provision is a guarantee for the parties that proceedings before the EPO will be conducted openly and fairly (cf. J 20/85 [4] and J 3/90 [11]). The right to be heard is intended to ensure that the parties to proceedings are not taken by surprise by grounds mentioned in an adverse decision (cf. decision T 892/92 [2.1]).

The parties may present their comments either in writing, or orally during OPs. The express right to OPs is enshrined in A 116.

[11] The minutes of the OPs before the OD do not contain an indication that the parties were heard on the issue of whether or not documents D31 to D39, D46 and D47 should be allowed into the procedure. According to the minutes, the Chair of the OD announced at the very beginning of the OPs that documents D1 to D27, D29 to D41, D44, D46 and D47 were admitted into the proceedings.

[12] The Board at the OPs asked the parties for their recollections of whether or not the parties at the OPs before the OD were heard on the issue of allowing documents D31 to D39, D46 and D47 into the procedure. Those parties, respectively their representatives who were present at the OPs before the OD, namely opponents 01 and 03 […], confirmed that the parties were not heard before the Chair made the announcement to allow the documents in question into the procedure.

[13] Contrary to the argument presented by the [opponents] it was not necessary for the [patent proprietor] to file a renewed request at the OPs before the OD not to admit the documents, as this request was made in writing on 6 May 2005.

[14] [The opponents’] argument, that a party’s right to be heard is satisfied if said party, which had requested OPs according to A 116, has had the opportunity to argue in writing, cannot be followed by the Board. If this interpretation of A 113(1) were to be followed, the parties’ right to OPs safeguarded by A 116 would be redundant, with the unacceptable consequence that an OD or a Board of Appeal with regard to a controversial issue discussed during written procedure, would be entitled to give a decision on this issue right at the beginning of OPs without hearing the parties (see T 594/00 [4]).

[15] Moreover, the [opponents] emphasised that only one of the documents in question, namely D31, was actually referred to in the decision under appeal. Thus the decision is not therefore tainted by the disclosure in the remaining ten documents concerned.

The Board does not agree that the actual number of documents which have been referred to in the appealed decision is a factor which has decisive weight in a decision as to whether or not the patent proprietor’s right to be heard has been violated.

[16] As a consequence, the decision under appeal is based on grounds and evidence on which the patent proprietor has not had an opportunity to present his comments during the OPs and thus contravenes the requirements of A 113(1).

[17] According to Article 11 RPBA, “[a] Board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise” (emphasis added by the Board). When deciding whether or not to remit the case according to A 111(1) the Board examined if such special reasons exist in the present case.

[18] According to the case law of the Boards of Appeal the violation of the principle of the right to be heard is considered as a fundamental deficiency in proceedings (see T 125/91).

It is, however, also acknowledged that there is no absolute right of a party to have every aspect of a case examined in two instances (T 133/87 [2]). Other criteria, e.g. the general interest that proceedings are brought to a close within an appropriate period of time, have also to be taken into account.

[19] The [opponents] argued that, considering the aspect of procedural efficiency, it was within the discretion of the Board, even if new evidence was submitted during the appeal procedure, to allow it into the procedure and to decide the case without remitting it to the department of first instance. Attention was directed to decision T 416/07 [9-11], where this Board in a different composition, for reasons of procedural efficiency, had decided not to remit a case to the department of first instance but to decide itself.

In the case underlying decision T 416/07, the Board had to decide whether or not several documents submitted by the appellant/opponent after expiry of the time limit according to A 99(1), should be admitted into the procedure. Two of these documents had been filed at the OPs before the department of first instance and had not been admitted into the procedure by the OD. The remaining documents had been filed with [… the] appellant/opponent’s ground for appeal. The appellant/opponent had requested that the case be remitted to the department of first instance should all these documents not be admitted into the procedure.

The Board decided to admit the two documents submitted by the appellant/opponent at the OPs before the OD (T 416/07 [2-3]), but not to admit the documents submitted with its grounds for appeal (T 416/07 [5-7]). Finally the Board decided, for reasons of procedural efficiency, not to remit the case to the department of first instance (T 416/07 [9-11]).

As is apparent from the above the factual and procedural situation underlying decision T 416/07 is different and therefore the Board does not consider it to be relevant for the present case.

[20] Since the patent proprietor whose right to be heard has been violated requests the remittal of the case to the first instance, in the specific situation of the present case this request has precedence over apprehensions regarding an undue delay of the procedure (see T 594/00 [9]).

[21] The opponents argue that remittal to the first instance for further consideration of the question of admissibility of documents D31 to D39, D46 and D47 would be of no practical use and would only delay the procedure and prolong the period of legal uncertainty, as the patent proprietor has already made its arguments in writing, which have already been dealt with by the OD in the decision under appeal and which have been found to be insufficient to make a case for the non-admission of these documents.

However, the reasoning for this decision was given in writing after the OPs and is based on grounds and evidence on which the patent proprietor did not have an opportunity to present his comments in accordance with A 113(1) as they were not given the opportunity at the OPs to address this issue. Thus, any argument the patent proprietor wanted to present in this respect at the OPs, which it considered to be pertinent for the decision, could not be made, and is therefore neither dealt with nor mentioned in the decision under appeal. One cannot know if, and to which degree, the patent proprietor’s arguments, if allowed, might have influenced the decision taken by the OD. Since the patent proprietor’s right to be heard has been violated by the OD, being an authority of the first instance, this violation cannot be repaired by hearing the patent proprietors on this issue before an authority of the second instance, but only by remitting the case to the first instance (see T 594/00 [10]). This situation is not therefore one which lends itself to the application of the principle that there is no absolute right to a party to be heard at two instances (see T 133/87).

[22] The opponents moreover argued that the patent proprietor has abandoned his right to be heard by not attending the OPs before the Board. The Board cannot identify a legal basis in the EPC from which it could be concluded that a party, appealing against a decision of a department of first instance, which had been taken in violation of its right to be heard, when it does not appear at OPs before the department of second instance has retrospectively abandoned its right to be heard before the department of first instance.

[23] The Board concludes that there are no special reasons in the sense of Article 11 RPBA not to remit the case. It is emphasised that the precise and correct definition of those documents which belong to the state of the art is of utmost importance for the realization of a legally correct and reliable procedure before the departments of all instances of the EPO. Therefore, the case is remitted to the first instance for further prosecution (A 111(1)). […]

I tend to agree with the opponents: the present remittal, although justified on formal grounds, appears to have been a mere waste of time. 

By the way, in the meantime the OD has revoked the patent again, but this time, so it seems, the patent proprietor did not appeal the decision.

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T 1309/07 – No Common Interest

Claim 1 of the main request (and of the patent as granted) read:

1. Piston for an internal combustion engine having an annularly arranged cooling duct which has inlet and outlet openings, it being possible to feed cooling oil through a cooling-oil nozzle as a free oil jet via an inlet channel into the inlet opening and therefore into the cooling duct and to lead cooling oil away through at least one outlet opening via an outlet duct, characterized in that the cooling duct (2) has at least three openings (3,4,5), two inlet openings (3,5) to be used alternately being arranged, as seen in the plane of the cooling duct, so as to lie opposite the one outlet opening (4), and in that the openings (3,5) are arranged symmetrically with respect to a centre axis extending through the outlet opening (4).

*** Translated from the German ***

Prior use by delivery of pistons

What was delivered ?

[3.1.1] Drawings E4, E5A, E6

Both drawing E4 and drawing E5a refer in their upper corner to drawing E6 (number of drawing 1K42147/23). In the number of the blank (Rohling) or pre-product given in the right upper corner of drawing E6 “A8” refers to a “piston blank with variances (Abweichungen)”, “+” to certain core forming process steps, and “B1” to further machining steps (see […] E5a). Moreover, all figures E4, E5a and E6 refer to the same order number 85271. Therefore, the Board has no doubts that the figures E4 and E5a and E6 show different manufacturing steps for the production of the piston shown in drawing E6.

[3.1.2] Assignment of the drawings E4 to E6 to the delivery notes (Lieferscheine) E7

a) The column “Désignation Article N° Commande – Pays d’Origine” consistently refers to “080V191X7A08B1-1 CL”. The Board is convinced by the explanation of [Opponent 1], according to which the abbreviation “X7” was chosen in the delivery notes instead of the designation of the core forming process steps in the drawings by means of a certain number of plus signs, also because the particular graphical arrangement of the plus signs in these drawings cannot be easily reproduced with a typewriter keyboard. Moreover, it appears plausible to the Board that, for data processing reasons, leading zeros have been inserted, so that the reference “80V191A8” used in the drawings becomes “080V191X7A08” in the delivery notes.

b) The fact that the following indications of the delivery notes can be assigned to the drawing E6 has also contributed to this conviction of the Board. In the centre of the drawing, on the right hand side, there is a horizontal table in which certain dimensions are assigned to the reference “KH”. Those dimensions have their counterpart in the delivery notes, where the dimension “KH”, i.e. height of the piston […], is given as “HA”, the abbreviation of the French designation for the height. As the dimensions for the piston height and also for the piston diameter correspond to each other in E7 and E6, the product designation in the delivery notes clearly refers to the pistons according to drawings E4 to E6.

[3.1.3] Summing up, the Board finds that from these documents it can clearly be derived that 17 520 pistons according to drawing E6, designed according to drawings E5a and E4, have been delivered to Renault before the priority date of the present patent.

Does this delivery make the pistons available to the public ?

[3.2.1] As a matter of principle, according to the case law of the Boards of appeal, a piece of information is to be deemed available to the public (a) if at least one single member of the public can obtain this piece of information and understand it, and (b) if there is no obligation of secrecy (see T 1081/01 [5]).

[3.2.2] [Opponent 1] is a typical supplier to the car industry. It has delivered pistons for the R19 and Mégane vehicles to the car manufacturer Renault.

If the pistons had been sold without any conditions, Renault would have had to be considered as a member of the public because it could dispose of them without restriction. However, there have been no submissions regarding the terms of delivery, in particular on whether there was a secrecy agreement or not. Therefore, it has to be assessed whether the circumstances of the business relationship lead to the conclusion that there was a tacit obligation of secrecy.

Was there a tacit obligation of secrecy at the time of delivery of the pistons ?

[3.2.3] a) According to the case law of the Boards of appeal, one may presume a tacit obligation of secrecy – inter alia – when the business partners have a common interest in secrecy.

This would, for instance, be the case if the development partners supply each other with samples for experimental purposes. However, such an interest could only be presumed until the pistons are delivered for mass production (Serienproduktion), because from this time on the pistons are destined to be incorporated into vehicles to be sold and thus made accessible to the public. In other words, as soon as the pistons are delivered for mass production one cannot presume a common interest in secrecy (T 1512/06 [4.2.5.a])

Therefore, in the present case, it is decisive whether the pistons that have been delivered were experimental pistons or pistons for the mass production of vehicles.

b) The delivery notes E7 show that between November 14, 1997 and January 5, 1998, i.e. in a period of less than two months, more than 17 000 pistons have been delivered. Such a great quantity as such militates against the presumption that the pistons could have been experimental pistons. Moreover, the delivery note of November 14, 1997, explicitly states that it is the first delivery for mass production (Serienlieferung).

Even if, as submitted by the [patent proprietor], four pistons were needed for an engine test, this would mean that more than 4000 engine tests would have been required. As an engine test run costs about 70 000 Euros, as the [patent proprietor] has submitted, this argument appears not to be convincing. Even more so in view of the argument of the [patent proprietor] that the pistons that had been delivered could have been experimental pistons for testing a modification of the mass production pistons.

The piston reference “80VA91” does not suggest that the pistons were pistons for experimental purposes. As a matter of fact, it can be seen from exhibit E5b that it was a “piston blank with variances”. It is true that in its third column a “piston blank for experiment” is referred to with reference V, but this reference is provided in a different place than in exhibits E4 to E7.

c) Catalogue B1

i) Together with the statement of grounds of appeal, the [patent proprietor] has repeated the submissions it had made during the opposition proceedings, according to which the pistons had not been accessible to the public because the pistons were not pistons for mass production bit experimental pistons. Moreover, it has asked [Opponent 1] to provide proof that the pistons were not experimental pistons.

By filing this exhibit [Opponent 1] has reacted to the submissions of the [patent proprietor] in its statement of grounds of appeal. Its purpose was to meet the submissions of the [patent proprietor] concerning a possibly missing link in the chain of arguments.

As the exhibit is not to be considered late filed, it has been admitted to the proceedings.

ii) Exhibit B1 bears a copyright notice of 1997; obviously it is an extract from a catalogue of considerable volume. Therefore, the Board considers unlikely that a catalogue of such a volume was not put in circulation.

Therefore, the Board is convinced that exhibit B1 was made accessible to the public in 1997.

iii) It can be seen in the second row on page 580 (under the entry “Renault”) that the pistons having the reference 80 V 191 concern the Diesel in-line engines F 8 QT-610/740/768/784/785 of vehicles R19 and Mégane. As drawing E6 depicts a piston of the F8QT740 type (see the bottom on the right hand side), it follows from exhibit B1 that it offered pistons of this type of construction. As, according to the statements of the [patent proprietor], B1 is an extract from a spare parts catalogue, the mass production of the F8QT-740 engines must have been started at the time of publication of this catalogue. At this moment in time one cannot presume a common interest in secrecy any more.

d) Considering these circumstances, the Board is of the firm conviction that the pistons that have been delivered were pistons for mass production of vehicles and that no interest in secrecy cannot be presumed any more.

[3.2.4] Therefore, the pistons according to drawings E4 to E6 have been made accessible to the public before the priority date of the application.

As the pistons according to the main request and the auxiliary requests were found to lack novelty and inventive step, respectively, in view of this prior use, the appeal was dismissed.

Two personal remarks:

(1) I find it interesting that the Board states that “a piece of information is to be deemed available to the public (a) if at least one single member of the public can obtain this piece of information and understand it …”. Personally, I do not think that understanding is required. If the person cannot understand the information but can, for example, record it and transmit it to others, this should be sufficient.

(2) If there was an experimental phase, wherein the delivery of the pistons was covered by a tacit secrecy agreement (a case envisaged by the Board), the mere fact that at a certain time the pistons are delivered for mass production does not, in my opinion, make them available to the public. It is the first sale of a vehicle comprising such a piston that makes them available. If the car manufacturer did assemble vehicles but, for some reason, did not sell them right away but kept them in its facilities for some time, the pistons would not yet be available to the public during that time, I would say.

I think that this situation is analogous to T 1081/01 where it was said that “information provided subject to a confidentiality agreement does not become available to the public merely by reason of the expiry of the obligation to keep it confidential. Some separate act of making it available to the public would be needed.”

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