Farewell

As announced some time ago, I will become a member of the Boards of appeal in 2014, which means that I cannot be a case law blogger any more.

I had the intention of continuing the blog for some more weeks, but as it turns out, I have run out of noteworthy decisions, which has never happened since 2009, when this blog took off. I take this as a sign that the time has come to terminate the proceedings.

I know some colleagues who have the intention of pursuing the work; I hope these projects will be reduced to practice and, if so, I shall be happy to provide links. 

This blog, however, will go silent. What has been published so far will remain online, as requested by some of you.

Let me just thank those of you whose comments have made this blog a more interesting place. Thanks to pat-agonia, Myshkin, MaxDrei, Roufousse T. Fairfly, Manolis, Raoul, George Brock-Nannestad, DrZ, ExaMinus, Rimbaud - to mention just a few dear contributors - as well as to those who preferred to stay anonymous. My thanks also go to Laurent Teyssèdre, the father of EPC case law blogging, whose blog was quite an inspiration to me.

All the best

oliver

Board deliberation (in a composition pursuant to A 21(4)(a) EPC)

T 434/12 – New Lines Of Attack

In this opposition appeal case, on the second day of the oral proceedings (OPs) before the board the patent proprietor submitted the following request:

“we herewith request adjournment of the OPs scheduled for 17 and 18 September 2013 in view of the new lines of attack brought by the opponents under A 100(c) for the first time during the OPs of 17 September 2013, …”

The Board refused to grant the adjournment:

[1.3] The appellant-patentee’s request for adjournment of the OPs in view of several “new lines of attack” against claim 6 of the main request […] was refused by the board at the OPs.

The present inter partes appeal proceedings lie from an interlocutory decision of the Opposition Division (OD) maintaining the patent in amended form on the basis of an auxiliary request which is identical to auxiliary request 8 filed with the patentee’s grounds of appeal. The patentee and four of the five opponents lodged appeals against the first-instance decision. Therefore, the situation of reformatio in peius does not arise in relation to the examination by the board of any of the sets of claims on file. Moreover, A 100(c) is within the framework of the present appeal proceedings and all the sets of claims on the basis of which the appellant-patentee has requested maintenance of the patent contain amended claims. Additionally, as is evident from the facts and submissions, the patent as granted contains a multitude of independent claims.

It is undeniable that one of the main duties of the board is to review the first-instance decision as to its merits, but the fact that the OD decided to conduct the OPs on the 13-14 September 2011 in a certain way for reasons of economy and efficiency of the proceedings, and thus decided to focus on one single independent claim (claim 1 for the main request), or one single ground of opposition (novelty for the method claims 6 and 7 of auxiliary request 2) in order to find out whether or not a set of claims failed, does not restrict the framework of the present inter partes appeal proceedings to those claims or those reasons which were specifically discussed at the OPs before the OD.

Moreover, independent claim 6 of the main request derives from granted claim 31 which was amended in the course of opposition proceedings. Therefore, the board has the power and the duty (A 114(1)) to assess whether or not independent claim 6 of the main request fails pursuant to grounds under A 100(c), in conjunction with A 123(2) and A 76(1), since a patent should not be maintained in amended form on the basis of unallowable amendments.

Maintaining a patent in appeal proceedings on the basis of unallowable amendments introduced during opposition and/or opposition appeal proceedings would be contrary to the spirit and purpose of the EPC (Article 23 RPBA). Thus, a literal interpretation of Article 13(1) RPBA should be avoided in the present case.

Additionally, the appellant-patentee itself cited page 11 of the parent application as filed as the basis for claim 6 of the main request. Therefore, the board must investigate first those cited passages of page 11 before being able to conclude whether or not they represent an allowable basis for the amendments. In doing so the board is not restricted to the reasoning submitted by the parties in writing before the OPs. The OPs may serve to clarify some additional aspects related to the arguments submitted in writing in relation to A 123(2) and A 76(1). This preserves the parties’ right to be heard (A 113(1)). Under the circumstances depicted above, artificially restricting the discussion about the allowability of amendments would have deprived the OPs of their meaning, and adjourning the OPs would have made the proceedings interminable. After all, the filing date of the application from which the patent in suit derives is 5 December 1991.

The fact that the appellants-opponents presented orally a more detailed reasoning in relation to A 123(2) and A 76(1) than their reasoning in writing can be easily explained by the high number of independent claims in the main request and the fact that the OD focused only on claim 1, ignoring the other claims.

The so-called “new lines of attack” correspond to the necessary discussion of added matter which directly arises when undertaking a comparison between the wording of independent claim 6 of the main request and inter alia the text on page 11 of the parent application as filed, cited by the appellant-patentee as being its allowable basis under A 76(1). Therefore, the board is convinced that it was to be expected that in the course of the OPs before the board the features and expressions appearing on page 11 of the parent application as filed would have to be compared with the expressions in independent claim 6 of the main request, and thus the appellant-patentee should have been prepared accordingly.

However, the board does not consider that the appellant-patentee has committed an abuse of proceedings by filing the auxiliary requests in the course of the OPs before the board. The question which in fact arises in this inter partes appeal case relates to an evaluation of the fairness of the proceedings. The fact that there was a detailed discussion during the OPs before the board in relation to claim 6 of the main request was taken into account when assessing whether the filing of auxiliary requests was justified in the course of the OPs.

In the end the patent was revoked.

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

The file wrapper can be found here.

T 2165/10 – In The Archives

This is an appeal against the decision of an Opposition Division (OD) to reject an opposition.

The crucial matter was whether late-filed evidence relating to an alleged prior use should be admitted:

[1.1] The documents E1-E10, which relate to an alleged public prior use, were filed by the [opponent] with its letter of 8 April 2010, well after expiry of the nine month opposition period ending 5 December 2008. By applying the criteria of prima facie relevance, they were not admitted in the proceedings by the OD […].

[1.2] The Board shares the OD’s conclusion that E1-E10 were filed late without any good reason for doing so. There was indeed no change in the file during the opposition proceedings, such as a patent proprietor’s new request, which could have justified the late filing. Furthermore, the Board considers that the OD applied the principle of prima facie relevance correctly in a reasonable manner when exercising its discretional power (G 7/93 [2.6]). Consequently, the Board does not see any reason to overturn that decision.

[1.3] The reasons mentioned by the [opponent] for the late submission of E1-E10 are that the public prior use took place more than 20 years ago in a foreign country. Since the legal time limit for keeping documents had long elapsed, many of the relevant documents had been destroyed. This made it a huge burden to retrieve the necessary pieces of evidence, so that the [opponent] could only file them as complete as possible after the opposition time limit. With respect to its letter dated 24 April 2008 sent to the respondent, in which it refers to the public prior use, the [opponent] argues that the documents in its possession at that time were considered not enough to constitute a complete chain of evidence, so that it did not wish to provide it in that incomplete form to the OD.

The Board, however, shares the respondent’s view that the [opponent] should have included an indication of the alleged public prior use in its notice of opposition and indicated/filed all evidence in its possession at that time, i.e. the drawings and pictures as annexed to its letter to the respondent dated 24 April 2008. Any further evidence, like the commercial documentation, could have been indicated to be filed later, indicating the difficulties in retrieving such documents in the archives, abroad and/or with third parties.

[1.4] The Board is of the opinion that the prima facie relevance test was also exercised correctly in that the OD considered that the evidence E1-E10 does not disclose a number of the claimed features (novelty) and does not deal with the problem of the contested patent of avoiding jamming of the overwrapping machine when pairing the packets with the respective sheets of packing material […]. Since there is a document (D4) that does relate to this problem, the Board can also not find fault in the OD’s reasoning to find the prior use less relevant as starting point. It also dealt with the relevance of the prior use as a teaching which could possibly lead the skilled person to the invention […] and found it also insufficient in that respect.

Thus, the OD dealt with all aspects of relevance of the prior use when not admitting it. It is, therefore, not part of the opposition proceedings and, as a consequence, not as such part of the appeal proceedings (A 114(2)).

[1.5] The late filing of the evidence relating to the alleged public prior use could have been “repaired” on appeal if the OD had not applied its discretion correctly. This is, however, not the case here as discussed above.

[1.6] The [opponent] accepts in the appeal proceedings that the guide in the alleged public prior use is located downstream, i.e. not upstream, from the cross station and now argues that this is not a “substantial” difference which could justify an inventive step. The skilled person using his common general knowledge would immediately think of positioning the guide on the other side if needed. It cites T 1/81, which establishes that inverting process steps cannot support inventive step and implies that a geometrical inversion can neither justify this. Similarly, it cites T 39/82, T 142/84, T 332/90, T 485/91 and T 25/97 for supporting that a new application of a known measure cannot lead to an inventive step if the problem does not change.

The above cannot lead to the Board to exceptionally admit the evidence relating to the alleged public prior use of its own motion in the appeal proceedings.

In assessing whether it qualifies as closest prior art, also the function of the guide has to be taken into account. In the alleged public prior use machine it has no function whatsoever with respect to the transparent packing material nor to guide the cigarette packs to that packing material. It guides the wrapped packs to the revolver 08.01, which is a different problem. Even if the above mentioned case law would establish the principles attributed to it by the [opponent], the present alleged public prior use would prima facie not fulfil them.

The evidence related to the alleged public prior use is therefore not admitted in the appeal proceedings.

A witness hearing on this matter is thus also not necessary.

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

The file wrapper can be found here.

T 59/08 – More On Sufficiency

This is a revocation appeal.

The independent claims on file read:

1. A multimodal polyethylene composition for pipes, which multimodal polyethylene has a density of 0.930-0.965 g/cm³ and an MFR5 of 0.2-1.2 g/10 min, characterised in that the multimodal polyethylene has an M_n of 8000-15000, an M_w of 180-330 x 10³, and an M_w/M_n of 20-35, said multimodal polyethylene comprising a low molecular weight (LMW) ethylene homopolymer fraction and a high molecular weight (HMW) ethylene copolymer fraction, said HMW fraction having a lower molecular weight limit of 3500, and a weight ratio of the LMW fraction to the HMW fraction of (35-55) : (65-45).

12. A pipe characterised in that it is a pressure pipe comprising the multimodal polymer composition according to any one of the preceding claims, which pipe withstands a pressure of 8.0 MPa gauge during 50 years at 20°C (MRS8.0).

[2] The question to be answered when assessing sufficiency of disclosure is whether the invention as defined in the claims can be performed by a person skilled in the art throughout the whole area(s) claimed without undue burden, taking into account the information given in the patent in suit and using common general knowledge.

[2.1] The invention of which the sufficiency of disclosure has to be judged is the object defined in present claim 1 by the combination of the following features:

(i) a multimodal polyethylene composition suitable for pipes,

the multimodal polyethylene having

(ii) a density of 0.930-0.965 g/cm³,

(iii) a MFR5 of 0.2-1.2 g/10 min,

(iv) a M_n of 8000-15000, a M_w of 180?330 x 10³ and a M_w/M_n of 20-35,

and comprising

(v) a low molecular weight (LMW) ethylene homopolymer fraction and a high molecular weight (HMW) ethylene copolymer fraction in a weight ratio of the LMW fraction to the HMW fraction of (35-55) : (65-45)

(vi) said HMW ethylene copolymer fraction having a lower molecular weight limit of 3500.

[2.2] The contested decision nor the parties on appeal addressed the question whether the present patent specification disclosed a technical concept fit for generalisation and whether it made available to the skilled person, with his common general knowledge, compositions suitable for pipes meeting the combination of parameters defined in claim 1, as well as the pipes according to claim 12. The questions addressed were rather which meaning should be attributed to the feature “lower limit of the high molecular weight (HMW) ethylene copolymer fraction” and whether, in the absence of any mention in the patent with respect to the measurement methods for determining M_n, M_w and the lower limit of the high molecular weight (HMW) ethylene copolymer fraction, the skilled person would know which measurement method was to be employed.

[2.3] Following the normal rule of claim construction according to which terms used in a claim should be given their ordinary meaning in the context of the claim in which they appear, the lower molecular weight limit of the HMW ethylene copolymer fraction defined in claim 1 designates the lowest molecular weight of any of the molecules of the HMW fraction. This view is supported by the statement provided in the specification on page 3, lines 9-12 and was not disputed any longer during the oral proceedings.

[2.4] In the absence in the claim of any indication of a method for determining M_n, M_w and the lower limit of the high molecular weight (HMW) ethylene copolymer fraction, the claim has to be read as allowing any method of measurement, including any setting, that can be said to be standard in the art concerned; in other words, any ordinary method within the context of the present claim. In this respect, the parties do not dispute that different methods (for example GPC), including different settings, would be available to determine values for those parameters, nor that the choice of the measurement method for determining said parameters has an influence on the values obtained.

[2.5] The notions of “true value” and closeness to that “true value” in relation to M_w and M_n parameters, to which the [patent proprietor] referred, are however not only vague, but also not reflected by the information provided in the patent in suit.

If a patent proprietor wishes to argue that a parameter range in a claim should be read in a special way or needs to be measured in a particular manner because several possibilities are available, then for that argument to be accepted it is necessary to limit the claim to this method of measurement by way of amendment, provided that this can be done meeting the requirements of A 123(2). It is not enough to argue that the claim should be read in a particular way when the wording of the claim does not require this.

For lack of information to that effect, it is not apparent that the skilled person would try to determine the “true value” of M_w and M_n, as it is at least equally credible that he would choose any standard method meeting his needs in the context of the technical circumstances of the case, i.e. also taking into account the convenience and reproducibility of that method.

[2.6] Therefore, the present claims should be read as to encompass any composition or pipe that meets the defined values of M_w, M_n and “lower limit of the high molecular weight (HMW) ethylene copolymer fraction” using any method that can be considered to be standard in the art in the technical context of the present claims as the method of measurement for those parameters.

[2.7] Such a reading of the claim may on the one hand result in a larger number of compositions or pipes meeting the claimed values than when one specific method were used, and therefore in less difficulty to obtain compositions or pipes as defined by the claims, i.e. in less stringent requirements for assessing sufficiency of disclosure of the claimed combination of features. In that case it may on the other hand require stronger arguments in favour of novelty and inventive step, in particular if the claimed values were held to distinguish the claimed subject-matter from the prior art and to be considered essential for providing a technical effect vis-à-vis the prior art.

[3] The [opponents’] argument that the conventional methods for determining M_w and M_n led to different values out of which a lack of guidance resulted for the skilled person wishing to obtain the result defined in the patent specification […], namely to obtain a pressure pipe with a desired combination of good processability and good strength, cannot be accepted as an argument pertaining to sufficiency of disclosure of the invention, as those results or effects are not features of the present claims. This follows from the consideration that - in accordance with R 43(1) – the invention in the European patent application is defined by the subject-matter of a claim, i.e. the specific combination of features present in the claim, as is reminded in opinion G 2/98 [2] of the Enlarged Board of Appeal. Whether the result defined in the present patent specification […], is achieved or not, may, however, become relevant under the requirement of inventive step, for assessing the technical problem which can be held to be successfully solved by the combination of features claimed.

[4] The uncertainty about which method the skilled person would select to determine M_n, M_w and the lower limit of the high molecular weight (HMW) ethylene copolymer fraction, which was the central issue addressed by the parties both in opposition and in appeal proceedings, is in the present case not adequate to make a case against sufficiency of disclosure.

The argument that the choice of the measurement method for determining M_n, M_w and the lower limit of the high molecular weight (HMW) ethylene copolymer fraction had an influence on the values obtained and that therefore the skilled person would not know whether he had obtained something falling within the ambit of the claims – as it was argued by the [opponents] as well as in the decision under appeal – boils down to the argument that the boundaries of the claims are not clearly defined, which is a matter of A 84, not sufficiency of disclosure. Such an objection under A 84 cannot be successful as it would not arise out of any amendment made in opposition or appeal proceedings.

[5] For assessing the requirement for sufficiency of disclosure the question should be answered whether the skilled person, following the teaching provided in the patent specification […], and also taking into account his general knowledge, would be able to obtain without undue burden multimodal polyethylene compositions meeting all criteria defined in claim 1 of the patent in suit […] and the pipe according to claim 12.

[5.1] In this respect, points raised before the opposition division […], which in particular relate to the process conditions that are needed to obtain the combination of technical features defined in the claims, and which appear to be essential to assess the sufficiency of the disclosure, should also be considered.

[5.2] However, none of those issues was decided by Opposition Division, nor argued by the parties before the Board.

[6] Under those circumstances, as the essential issues to be addressed in respect of sufficiency of disclosure have not been dealt with in the contested decision, the Board exercises its discretion under A 111(1) to remit the case to the first instance for further prosecution.

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

The file wrapper can be found here.

T 163/13 – Let’s Be Reasonable

As you know, the EPO has quite strict rules regarding corrections. In particular, corrections will not be allowed unless it is immediately evident to the skilled person that an error has occurred and how it should be corrected. Sometimes, as in the present case, opponents push this reasoning too far.

The patent proprietor wished to amend its claims by introducing a temperature (72°F) which it said was disclosed in paragraph [0035] of the patent. However, this paragraph only contained a reference to a value 72EF:

[1.2.2] [The opponent] admits that a skilled reader will realise that “72EF” in paragraph [0035] of the description is an obvious error, but contests that “72°F (22.2°C)” now introduced in claim 1 of auxiliary request 1 is the only possible correction. It considers that instead of the temperature the correction could for instance concern the pressure or any other parameter the skilled person could think of in the technical field of testing moisture ingress of containers. Therefore, the correction would not be admissible as it clearly contravenes Rule 139 and Article 123(2) EPC.

The Board, however, shares [the patent proprietor’s] view that the only possible correction having a technical meaning in the present context is the temperature as it is an essential parameter for such a test. This appears clearly for instance from D10, 1st page, top of right-hand column […]. Consequently, the skilled person will immediately consider that “F” means “Fahrenheit” and make the correction accordingly. Hence, the correction complies with R 139 and A 123(2).

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

The file wrapper can be found here.