T 1726/08 – Good Faith And Appeal Fees

The present decision is a straightforward application of G 2/97. Its particularity lies in the fact that the applicant had evidence that somebody at the EPO had noticed that the appeal fee had not been paid: for some unknown reason an incomplete internal EPO memo “Processing of an appeal” was accessible through Epoline file inspection. But this element does not really bear on the logic of G 2/97.

[1] In its decision G 2/97 [4.1-2], the Enlarged Board of Appeal (EBA) held that the principle of good faith does not impose any obligation on the board of appeal to notify an appellant that an appeal fee is missing when the notice of appeal is filed so early that the appellant could react and pay the fee in time, if there was no indication – either in the notice of appeal or in any other document filed in relation to the appeal – from which it could be inferred that the appellant would, without such notification, inadvertently miss the time limit for payment of the appeal fee.

[2] In decision J ../87, the Legal Board of Appeal held that in the absence of any circumstances which may create a legitimate expectation to receive a warning or notice, the EPO has no obligation to inform an applicant or his representative that a fee has not been paid in due time.

[3] By referring to a printout of an incomplete internal EPO memo “Processing of an appeal” (Form 2701), the appellant argued that somebody at the EPO had noticed that, although the notice of appeal had been filed, the corresponding appeal fee had not been paid at a moment in time when there was still time enough to pay the appeal fee within the time limit.

[4] The board notes however that it is unclear from the referred to document whether the EPO had noticed the lack of payment of the appeal fee before or after the time limit for the payment had expired since the same document indicates that the statement of the grounds of appeal had already been filed (which was actually filed on 21 August 2008). The appellant had no explanation for this fact.

[5] Although the board cannot exclude that indeed an earlier (incomplete) version of Form 2701 had been present in the electronic file and therefore had been accessible via online file inspection before the completed form was added to the same file on 2 September 2008, the board considers it actually irrelevant whether or not the incomplete Form 2701 was produced and made accessible on 12 June 2008. Even if an officer at the EPO had noticed on 12 June 2008 that the notice of appeal had been filed but the corresponding appeal fee had not been paid, he or she had no information as to whether any non-payment might not be on purpose and therefore conclude that the appellant, in the absence of any notification, would inadvertently fail to pay the appeal fee within the time limit.

[6] There was still enough time to pay the appeal fee between 12 June 2008, when the EPO arguably had noted that the fee payment was lacking, and the end of the two month period of A 108, which ended on 30 June 2008 while it was recorded by the appellant’s representative as ending on 18 June 2008 to avoid any risks related to the application of R 126(2). The appellant argued however that, in contrast to the case underlying decision G 2/97 (where the notice of appeal was filed five weeks before the expiry of the time limit), the time period during which the fee could be paid after the filing of the notice of appeal in the present case was much shorter, i.e. one week if the ten day period under R 126(2) was not considered. This period could therefore not be construed as so long that the appellant could react and pay the appeal fee in time, as it was in the case underlying decision G 2/97.

[7] The board notes that it is not uncommon in the field of patenting that the payment of an appeal fee is handled separately from the filing of the notice of appeal (i.e., by third parties processing payments), which means that a payment may well arrive at the EPO later than the notice of appeal but still within the time limit. It may well be that the payment of appeal fees is withheld deliberately, both in inter-partes and in ex-parte proceedings. For example, a representative may file a notice of appeal and withhold the payment of the appeal fee until final instructions on the effective lodging of the appeal are received (see, for example, decision T 1465/05 [VII]). In fact, nothing in the EPO file indicated that the appellant may inadvertently fail to pay the appeal fee within the time limit. Therefore, the board cannot see any factual difference to the case underlying decision G 2/97 which would justify a different legal position.

[8] Further in this respect, the present case also differs from earlier cases referred to by the appellant […]. In the case underlying decision T 923/95, the appellant paid an insufficient appeal fee. In the case underlying decision J 13/90 […] the applicant, in a request for re-establishment after its failure to pay a renewal fee, announced to pay this renewal fee only after re-establishment was granted (disregarding the provision that the omitted payment should be completed within the time-limit for filing the request for reestablishment). In both cases the filed documents indicated that some error(s) had occurred on the appellant’s side and that the appellant was likely to inadvertently fail to make a timely payment.

[9] In the present case however, no evidence is on file that the EPO could have inferred from the filed documents that without a notification, the appellant would inadvertently miss the time limit for paying the appeal fee. Therefore and following the general findings in decisions G 2/97 and J ../87 the board decides that the principle of legitimate expectations does not apply.

We shall see another aspect of this decision tomorrow, if you like.

To read the whole decision, please click here.

R 19/09 – You Need A Causal Link

The present petition for review deals with decision T 1874/06 where the opposed patent was revoked.

[5] The discussion during the appeal proceedings mainly concerned inventive step pursuant to A 56 in view of document E2A and, in particular, the following question: Was it obvious for the skilled person aiming at further improving the performance of tools to increase the QI value of the layer system known from E2A to a value of at least 5?

It is in this context that the petitioner referred to measuring results disclosed in tables 1 and 2 of his patent. Together with the grounds of appeal he filed “sketch A” representing the values of these tables in the form of two characteristics showing the cutting performance versus the QI values. It was submitted that both characteristics showed an unexpected increase of the cutting performance of the tool at QI values of at least 5. This was one of the proprietor’s arguments in support of inventive step.

[6] Neither in the Board’s communication annexed to the summons to oral proceedings (OPs) nor anywhere else in the file is there any indication that the issue of an allegedly “wrong comparison” between the QI values of the top characteristic and those of the bottom characteristic in “sketch A” was raised. It therefore appears that this reason of the Board of Appeal for not acknowledging an unexpected effect […] was indeed never discussed in the appeal proceedings. Thus, it cannot be ruled out that the petitioner’s right to be heard was disregarded in this respect.

[7] In […] the petition and at the OPs before the Enlarged Board of Appeal […] the petitioner submitted that the violation of his right to be heard was fundamental as there was a causal link between this violation and the final decision (thereby implicitly applying the jurisprudence of the Enlarged Board of Appeal in case R 1/08). As conceded by the petitioner such a link can only be assumed to exist if the Board had refused to acknowledge an unexpected effect solely based on the “wrong comparison” argument (on which the petitioner was not heard). If, on the other hand, the Board had refused to acknowledge the unexpected effect also for other reasons on which the petitioner was heard it could not be argued that the procedural deficiency causally determined the final decision.

[8] The “wrong comparison” argument referred to above is discussed in point [5.5.1] of the decision under review. Point [5.5.1] is clearly devoted to a discussion of the arguments forwarded by the petitioner. These considerations are preceded, in point [5.5], by a comprehensive reasoning of the Board concerning inventive step having regard to document E2A. Based on the teaching of document E2A alone, in particular of its examples 1 and 7, the Board comes to the conclusion that “the application of a bias voltage of -50V in combination with the discharge current and the nitrogen pressure being held constant at those of examples 1 and 7 (...) would inevitably produce a QI value above 5. Therefore the person skilled in the art would inevitably arrive at the subject-matter of claim 1 of auxiliary request II without any inventive skill”(emphasis added). Whether this argumentation is correct in substance cannot be the subject of review proceedings (see R 2/08 [5]; R 9/08 [6.3]). In any case the line of reasoning in point 5.5 is independent of a possible unexpected effect of the claimed subject-matter and therefore independent of “sketch A”.

9. For this reason it is highly questionable whether the procedural deficiency referred to in point [6], supra, could have been causal for the final decision. However, this question can be left open since, as will be shown in the following, the “wrong comparison” argument was not the only reason of the Board for not acknowledging an unexpected effect.

[9.1] Point [5.5.1] of the reasons deals, in a first paragraph, with the appellant’s counter-arguments in respect of the teaching of document E2A. In a second paragraph the Board then analyses appellant’s “sketch A” in view of the alleged unexpected effect. Based on the “wrong comparison” argument the Board concludes that “it has not been shown that this effect has its origin in the distinguishing feature”. Then the Board goes on to state: “Furthermore, as evident from examples 1-7 a higher QI value does not imply an increased cutting distance”, followed by an analysis of the QI values and the corresponding cutting distances of various examples of table 1 of the patent.

Independently of whether or not this analysis is correct in substance, it shows that the Board considered the alleged effect of an increased cutting distance at higher QI values not only under the aspect of a supposedly “wrong comparison” between two different layer systems, but also based on an analysis of the QI values and the cutting distances belonging to one specific layer system. Even if it is true that the Board of Appeal did not explicitly refer to “sketch A” in this connection, its analysis refers to measuring values substantially as contained in the bottom characteristic of “sketch A” from which the petitioner derived the existence of an unexpected effect. The conclusion drawn by the Board from these measuring values that “a higher QI value does not imply an increased cutting distance” is to be considered as a direct answer to the appellant’s argumentation of an unexpected effect. The Board thus denied the existence of an unexpected effect for a second reason on the same factual basis as “sketch A” submitted and discussed by the appellant/petitioner during the appeal proceedings. The question whether or not this finding of the Board of Appeal was correct in substance cannot be the subject of the review proceedings.

[9.2] The Enlarged Board of Appeal therefore concludes that the “wrong comparison” argument was only one of two grounds for which the Board did not acknowledge the existence of an unexpected effect and that the second ground given in the decision under review was a reaction to the submissions of the appellant on this issue. Consequently, for this reason alone there is no causal link between the procedural deficiency as specified in [6], supra, and the decision under review. Due to such a lack of causal link the violation of A 113 is clearly not fundamental within the meaning of A 112a(2)(c).

To read the whole decision, click here.

NB : This decision has also been discussed on the Blog du droit européen.

Interpretative Spotlight : “about”

Claim 1 of the request under consideration read:

1. A method for cultivating L.intracellularis bacteria comprising obtaining culture cells infected with L.intracellularis, incubating said infected cells at an oxygen concentration of less than about 18 percent while maintaining said infected cells in suspension, wherein harvesting is done when greater than about 70% of the cells as determined by the TCID50 method are infected.

[7] An objection for lack of clarity was raised against the term “about” in the expression “wherein harvesting is done when greater than about 70% of the cells as determined by the IFA method are infected”. In accordance with the case law (e.g. T 190/99), a patent must be construed by a mind willing to understand, not a mind desirous of misunderstanding. Here, the skilled person would be fully aware that, because of the number of parameters which may influence cell growth, it will not be possible exactly to predict when the number of cells will reach a defined mathematical value (70%). Yet, he/she would have no problem in evaluating when the cell culture has reached an essentially equivalent stage (here “about 70%”).

For this reason, there is no lack of clarity in claim 1.

To read the whole decision (T 692/08), click here.

T 281/07 – Revival Is Possible

When a request has been withdrawn in opposition proceedings, can it be resurrected in appeal proceedings ? In T 390/07 the Board had found such a request inadmissible. The purpose of an appeal being to review what has been decided at first instance (and, by necessary corollary, not to review what has not been decided), the only basis on which a request withdrawn at first instance might be admitted on appeal - so the Board - was that, as in the case of any other request filed on appeal, it might overcome the reasons for the decision actually given on another request.

The present Board is more relaxed. It allows the resurrection of a formerly withdrawn request and explains why the reasoning of T 390/07 should not apply.

[2.1] Claim 1 of the […] main request is identical with claim 1 of auxiliary request 3 that had been filed during oral proceedings before the Opposition Division […] and then withdrawn, so that it is not part of the impugned decision. […] However, the claims as granted (main request during the opposition proceedings), which had been found not to be patentable under A 123(2) because of an unallowable disclaimer, are part of the impugned decision. […] These claims have been maintained as main request upon filing of the appeal and have been replaced by the present main request by a letter dated October 13, 2009.

Therefore, the present case differs from the situation underlying decision T 390/07 where the auxiliary request that had been withdrawn during the opposition proceedings was again filed as main request from the very beginning of the appeal proceedings (see T 390/07 [X]). Moreover, also in contrast to T 390/07, the main request in the appeal proceedings has been filed with the intention to overcome the ground of opposition mentioned in the impugned decision and to improve the position with regard to novelty and inventive step by limiting the claimed subject-matter to particularly preferred embodiments. This is a legitimate way of proceeding that corresponds to the aim of the appeal proceedings. Therefore, the Board has exercised the discretion conferred to it by Article 13(1) RPBA and admitted the amended main request.

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

R 21/09 – Autonomous But Not Autistic

This decision deals with an alleged violation of the right to be heard. The crucial fact was that the Board had accepted evidence filed before the High Court of Justice – Chancery Division – Patents Court, which had led to the revocation of the UK part of the patent, without examining in detail all the documents that had been filed before that Court.

After having established that the petition was not clearly inadmissible, the Enlarged Board of appeal (EBA) deals with its allowability:

[2.1] The petitioner distinguishes between the violation of its right to be heard and the violation of the principle of independence of the law under the EPC with respect to national law, which principle gives a party to appeal proceedings before the Boards of appeal the right to independent proceedings (instance indépendante). When asserting that the right to be heard has been violated, the petitioner criticizes the Board for not having allowed a new discussion of the whole set of documents that had been filed before the English jurisdictions. The second point of the petition for review points out in detail why the Board, therefore, was believed to have adopted the position of the English judge without examining directly the evidence.

The EBA considers that in reality each of these two infringements concerns the right to be heard: the petitioner has been deprived of its right to present a complete defence because the decision has taken into account partial elements, i.e. elements taken from the English decisions, without allowing for a discussion of the whole set of evidence that had been filed before these jurisdictions.

[2.2] The central point of the impugned decision is to know whether example 3D of document D1 destroyed the novelty of claim 1 of the patent under consideration and, more precisely, whether crystalline form α was a direct implicit and inevitable result of this example. The Board of appeal has come to the conclusion that this crystalline form α was indeed produced when example 3D of D1 was carried out.. It is the elements of proof (elements de prevue) on which it relies that are criticized by the petitioner.

[2.3] As far as principles are concerned, the EBA fully agrees with the petitioner. The proceedings before the Boards of appeal are autonomous and decisions of national jurisdictions have no legal authority (autorité en droit). This principle has been asserted in the case law of the Boards of appeal already at a very early stage (see T 452/91 [5.4]). It follows that before the Boards of appeal the parties may expect to dispose of intact rights as to the organisation of their defence.

Any infringement of this principle would not only affect the integrity of the rights of the parties but would also be incompatible with the principle of independence of the members of the Board of appeal asserted in A 23(3), which members shall comply only with the provisions of this Convention and shall not be bound by any instructions.

[2.4] However, this principle does not exclude a certain interaction between national judicial systems and the European system, in particular in view of the elaboration of a harmonious European jurisprudence (see for example the decision of the High Court of Justice, Court of Appeal (Civil Division) in case n° A3/2009/0675 Actavis UK Ltd. V. Novartis AG, where the English judge analyzes the problem-solution approach as practised by the EPO and concludes in paragraph 63 that the decision on the obviousness of the solution provided by the patent under consideration to which he had come would have been the same if the problem-solution approach had been applied).

[2.5] In its decision T 665/95 (cited by the impugned decision) the Board has not considered this principle to be an obstacle when it refused further taking of evidence and relying on testimonies taken in Dutch proceedings. It is true that there is nothing to be said against parties introducing national decisions or documents filed during a national law suit into proceedings before the Boards of appeal of the EPO, but the Boards have to take utmost care when treating such facts and evidence which are somewhat different from ordinary documents, so that the independence of mind (liberté d’esprit) is safeguarded during the assessment of these documents so that the Board can come to a conviction of its own.

[2.6] Anyway, the filing of documents that have already been filed before national jurisdictions and of decisions of these jurisdictions has to comply with the general rule according to which each of the parties has to file the documents which it intends to use in the various proceedings, respectfully of the defence or the right to be heard. As matter of fact, even if the parties are the same, the appeal proceedings are distinct proceedings from national proceedings, and autonomous.

[2.7] These principles having been recalled, what is criticized in the decision [of the Board] is not that it had taken into account documents that had not been part of the proceedings (mis aux débats) but that it had not allowed the petitioner to discuss the documents filed, which according to the petitioner are incomplete, within the general context from which they had been extracted.

[2.8] Therefore, it is necessary to examine if the circumstances of the filing of the English decisions have deprived the petitioner of the right to be heard (A 113). This requires [the EBA] to check whether the petitioner has had the time needed to be prepared to discuss these decisions and the elements pertaining to these decisions, depending on whether it had to expect that they would be discussed during the oral proceedings.

[2.9] In its conclusion that crystalline form α was inevitably present in example 3D of document D1, the Board relied both on the experimental results filed by the opponents during the opposition proceedings […] and on the statements of experts before the English court […].

[2.10] In its preliminary communication, the EBA had already pointed out that the elements taken from the decision of the English first instance judge had not been the sole basis for the revocation of the patent and, therefore, there was no causal link between the alleged procedural violation and the decision to revoke the patent.

Thereupon, the petitioner has made a distinction between the effects proven on laboratory scale and on industrial scale. According to the petitioner, the Board had entirely relied on the assessment made by the English judge in the second case.

[2.11] Without entering into the discussion of the evidence retained by the Board of appeal, which corresponds to a substantial re-examination (réexamen au fond) and as such cannot be object of revision proceedings, the EBA comes to the conclusion that it is not true that the petitioner has been deprived of the right to defend itself using all of the elements taken into consideration by the Board of appeal, comprising those filed before the English jurisdiction, for the following reasons.

[2.12] There is no trace in the written submissions (écritures) filed by the petitioner during the appeal proceedings, nor in the minutes of the oral proceedings before the Board of appeal, nor in its decision [that would corroborate] the argument raised after the communication annexed to the [summons to ?] oral proceedings before the EBA, according to which the trials that Apotex had filed two months before the oral proceedings as third party observations did not correspond to those filed before the English jurisdiction.

Apotex had presented these trials as the trials filed before the English jurisdiction. In its written submission, […] Apotex declares that it has carried out four trials for the purpose of presenting them in the law suite in the UK and explains how the experimental conditions under which the trials were carried out could be guaranteed. It also indicates that the minutes of the trials and the X-ray diffraction pattern of the product are attached. […]

[2.13] In its written submissions filed as a response to these observations, the patent proprietor has expressed its astonishment […] that Apotex “made up its mind about two years after having filed them in the English proceedings …”. Then it criticized the results as to their substance (sur le fond) but did not allege that the trials were different from the trials presented to the English judge.

[2.14] The arguments made by the petitioner before the EBA in order to establish that the trials were not the same as those filed before the English jurisdiction reaffirm its arguments as to the substance of the case (de fond) made before the Board of appeal and do not contribute anything new as to the characterisation of the violation of its right to be heard. In particular, […] the petitioner has not established that it was unable to obtain the trials filed before the English jurisdiction for confidentiality reasons, as it mentioned orally when answering the questions of the EBA.

[2.15] In conclusion, it follows […] from the preceding assessment that the petitioner, who as the patent proprietor was a party to the proceedings before the English jurisdiction, knew two months before the oral proceedings before the Board of appeal that Apotex, its opponent in the infringement proceedings, had filed trials presented as those filed before the English judge. It has not pointed out, at that time, that the trials were different and that it had been refused access to the trials, or the whole set of trials, used by the English judge. Quite to the contrary, it has referred to their filing before the English judge. It has also discussed the substance of these trials. Moreover, the English decision had been filed as soon as September 3, 2007.

[2.16] Under these circumstances, it is not unreasonable to expect the patent proprietor to use all the means at its disposition for defending its patent, without compartmentalizing between the different proceedings which have to decide on the validity of the title. The attention of the patent proprietor had been drawn to trials that were potentially detrimental to the maintenance of the patent because they had already been decisive for the revocation of the patent by the English judge. It is true that these trials were only referred to in third party observations, but the third party, Apotex, was also the opponent in a law suite that ended in the revocation of the patent. As from this moment in time, it was predictable that the elements introduced into the proceedings by Apotex and presented as those already filed before the English judge, resulting the known consequences, could be used by the opponents in the appeal proceedings, as well as the decisions based on them. The petitioner chose not to complete the file of appeal with other documents examined by the English judge and which, according to the petitioner, could foil the documents filed by its opponents by providing a global vision of the trials only part of which had been retained.

[2.17] The fact that the Board of appeal had not referred to the decisions and trials in its preliminary communication cannot possibly characterize a violation of the right to be heard. On one hand, article 17(2) of the Rules of proceedings of the Boards of appeal (RPBA) points out that the communication cannot bind the Board. The communication expresses a preliminary opinion that the Board holds at a certain moment in time but which the Board may reconsider if the arguments made, in particular in response to this communication, were able to bring about changes in the case. In this very instance, the Board only gave a list of numbered documents, which was sent before Apotex filed its observations, in order to facilitate the preparation of the oral proceedings. It did not specify at all how the Board considered the case.

[2.18] Finally, as the proceedings were inter partes proceedings, it is clear that the framework of the discussions is also defined by the written submissions of the parties. As the trials had been introduced into the proceedings by a third party, they represented a potential danger for the patent proprietor. It was normally predictable that these documents could be used against it, the English decision being already part of the file.

[2.19] It follows from what has been said that the criticism in reality addresses the assessment by the Board of appeal of what it considered to be elements of proof. Under the pretext of a violation of the right to be heard, the EBA is requested to control the decision as to its substance (au fond), by checking whether the elements of proof which it retained were to be retained, and if they were sufficient or not. However, the choice between the elements of proof that have been filed and the assessment of their probative value fall within the sovereign assessment by the Board and are clearly outside the scope of revision proceedings.

[3] As a consequence of all that has been said above, the petition for review has to be dismissed as clearly unallowable.

You can download the whole decision (in French) here.

T 3/07 – Sufficiency Despite Obvious Errors

[7.4.1] Dependent claim 5 refers to the presence of a lotion further comprising an antiviral composition whereby the antiviral composition comprises from about 0.05% to 80% by weight of said lotion and wherein the antiviral composition is a water soluble metal ion.

The [opponent] argued that it is impossible to produce a lotion composition comprising 80% metal ions, which is the antiviral compound, from the metal salts listed in the patent in suit. For example in a salt like copper sulfate only 40% of the weight can be attributed to the copper ion. A composition of 80% by weight of copper ions can therefore not be produced as the composition would have to comprise more than 100% by weight of the sulfate anion. In other words, even if the “lotion” would consist of 100% antiviral composition and the antiviral composition of a 100% of copper sulfate, the amount of copper ions would not exceed 40%. According to the [opponent] the same applies to all the salts mentioned in the patent in suit where the metal ion generally accounts for less than half of the weight of the metal salts, including the presently claimed aluminium salts.

[7.4.2] The Board does not dispute the [opponent’s] calculation. An upper limit of 80% by weight of the metal ion is obviously incorrect when using the claimed aluminium salts. The Board is, however, of the opinion that the person skilled in the art when trying to put the embodiment of claim 5 into practice would readily identify this obvious mistake and know how to correct it. The Board has not doubts that the skilled person is in a position to calculate for a given aluminium salt the maximum amount of aluminium ion, which can be attributed to that particular salt, in the same way as the [opponent] did for the copper sulfate. It would also be immediately obvious to him that this value represents the theoretical upper limit, which cannot be surpassed when formulating a lotion. The obvious error in claim 5 is therefore not considered detrimental to the sufficiency of disclosure.

To read the whole decision, click here.

T 1468/08 – How To Recover ‘Lost’ Claims

Following the revocation of the patent under consideration by the Opposition Division (OD), the board of appeal in T 1468/08 set aside this decision and remitted the case to the OD “for further prosecution on the basis of the main request as filed during the oral proceedings before the Board” (which consisted of claim 1 only). The patent proprietor then requested correction under R 140 of the decision, “or other appropriate clarification”, to reflect that granted claims 2 to 10 “remain”.

The Board does not allow this request but indicates another way out of the dilemma.

[1] R 140, which is concerned with the correction of errors in decisions, states that: “In decisions of the EPO, only linguistic errors, errors of transcription and obvious mistakes may be corrected”. A decision contains an obvious mistake if the text thereof is not and obviously cannot be what the Board actually intended (see T 1093/05 [7]). R 140 does not pave the way to re-examination of the factual or legal issues on which a decision was based, nor to reversal of any conclusion derived by the deciding body from a consideration of these issues (see T 367/96 [2]).

[2] In the present case, it was clearly the intention of the Board in the above decision T 1468/08 to decide upon a single claim of a single request, reference being made hereto in the point IV of the Facts and Submissions of said decision, the Facts and Submissions being consistent with the Reasons for the Decision wherein only claim 1 is referred to […], and with point 4 which refers to remittal to the OD for further prosecution on the basis of “the claim according to the main request”. Thus, there being no obvious mistake in the decision, there is nothing to correct.

[2.1] In the minutes of the oral proceedings (OPs) held before the Board […], said minutes having been sent to the [patent proprietor] with a communication dated 28 December 2009, the final request of the [patent proprietor] as stated by the Chairman according to Article 15(6) RPBA before declaring the debate closed, was confirmed by the [patent proprietor] and recorded as being “that the decision under appeal be set aside and the patent be maintained on the basis of the main request as filed during the OPs before the board”. Said main request as filed during the OPs before the Board consisted of a single claim, namely claim 1 as indicated under the section entitled “Documents presented” on page 1 of the minutes. Thus the decision T 1468/08 is based on the request as filed at OPs before the Board, as reflected in the minutes thereof.

[2.2] The principle of party disposition as enshrined in A 113(2) allows the Board to decide only on a request submitted or agreed by the Proprietor of the patent. In the present case, the Board was thus only empowered to decide on the request as filed during the OPs before the Board, as this was the only pending request submitted by the [patent proprietor], as reflected in points IV and VII of the Facts and Submissions of the above decision T 1468/08 [IV] specifying that said request superseded all previous requests.

With regard to the [patent proprietor’s] statement in its letter […] that it was illogical and procedurally incorrect that the granted claims 2 to 10 should have been deleted, the question of deletion of claims does not arise. The principle of party disposition requires any party to identify in a positive manner those issues and objects it wants the deciding body to take a decision upon. In the present case, the [patent proprietor] identified the issues and objects as being claim 1 according to the main request as filed during OPs before the Board. Should the [patent proprietor] had wished to have a decision comprising also granted claims 2 to 10, then it fell within the exclusive competence of the [patent proprietor] to formulate such a request. It was thus logical and procedurally correct that the above decision T 1468/08 discussed only claim 1, said claim being the only claim submitted to the Board in the request as filed during the OPs before the Board, said claim being the only claim under review by the Board and the only claim decided upon in the above decision of the Board (see points [2.2] and [3.6] of the Reasons for the Decision).

[2.3] Therefore, the reference in point [IV] of the above decision T 1468/08 to “The only claim” correctly reflects the facts of this case. Having decided on the sole pending request as a whole, the Board thus sees no reason to correct its decision in this respect.

[3] With regard to the [patent proprietor’s] “belief” that the remittal should have referred to further prosecution also on the basis of the description, figures and claims 2 to 10 as granted, even if this “belief” were understood to be a request, this cannot be a request for correction under R 140, since the amendment desired would amount to a modification to the substance of the decision, such a modification not qualifying as a correction under R 140 […]. In any case, the Board notes that the description and figures never formed part of the [patent proprietor’s] request. As such, they could not be decided upon and therefore could not be reflected in the Order, as the [patent proprietor] apparently now wishes.

[4] With regard to the [patent proprietor’s] request for other appropriate clarification with regard to the status of granted claims 2 to 10, the Board may not explain its decision, which has to be taken at face value. The department of first instance, during further prosecution, is bound only by the ratio decidendi of the Board’s decision pursuant to A 111(2), the Board’s decision in this case being directed solely to claim 1 of the main request filed during OPs before the Board. Thus the Board notes that independent of the decision taken, during further prosecution of the case before the OD the [patent proprietor] may submit requests containing one or more of granted claims 2 to 10 as appropriate. Since limitation of claims during inter partes proceedings is regarded as a formulation attempt to respond to the objections raised rather than implying an irrevocable renunciation of subject-matter claimed, the [patent proprietor] thus still has every opportunity to submit such claims during the further prosecution of the case.

To read the whole decision, click here.

T 149/07 – Sophisticated Obviousness

The present decision gives a useful reminder concerning “common general knowledge”. It has also retained my attention because it concludes on lack of inventive step based on a rather sophisticated combination of documents. In a recent post, we have seen that the Boards do accept demonstrations of lack of inventive step based on more than two documents. Here the claim (effective date: 1995) was rejected as obvious over a combination of prior art D1 (1979) and D3 (1988), complemented by common general knowledge (for which D7 (1985) was considered to provide evidence). The fact that D7 also disclosed the drawback of the claimed alternative (its complexity) was considered to have been made obsolete at the date of the claim as a result of ongoing technical progress.

[...] D1 discloses a Fairchild-Automatic-Intercept-and-Response-System (FAIRS) which comprises a central command station controlling fixed or mobile transportable remote sites. The system is intended for carrying out signal surveillance, monitoring, direction finding and accurate location of hostile transmitters.

It was not disputed that D1 represents the closest state of the art showing a system of surveillance according to the precharacterising part of claim 1. [3.1]

The [opponent] considered claim 1 as including a mere aggregation of features independent from each other. In particular, the group of features concerning activation/deactivation and operation mode of the cells ([h], [j] and [k]) could be regarded separately from that pertaining to TOA measurement ([l] and [m]).

This view is convincing. A combination invention would imply a functional relationship between features or groups of features resulting in a combinative effect beyond the sum of the individual effects. Such a combinative effect cannot be identified in the present case at least with regard to the groups of features referred to above. In particular, claimed characteristics of a cell concerning activation, deactivation, communication with the information centre and loading of parameters, on the one hand, and features for determining the bearing of a phenomenon on the basis of a time-of-arrival measurement, on the other hand, are functionally not so linked together that a synergistic effect results from their combination. Thus, when assessing inventive step, each group of features may be considered per se. The [patent proprietor] objected that this approach resulted in a mosaic combination of different features out of their context. This objection, however, is not conclusive in view of the foregoing. [3.2]

[…] D1 is considered to disclose not only the precharacterising part but also feature [i] of claim 1. [3.4]

[…] D3 discloses feature [h] of claim 1.

In the Board’s view, D3 also discloses feature [j] of claim 1. [3.5]

[…] With regard to feature [k] of claim 1, D1 […] discloses that the receivers at each remote site are commanded from the command centre to scan particular portions of the RF spectrum wherein a threat transmitter is thought likely to operate. As soon as a threat signal is detected, signal recognition is carried out, an alarm is registered, a bearing is taken and the alarm is transmitted to the command centre. Thus, the receiver at a remote site operates in an active mode in response to a command from the command centre and reports to the command centre upon detection of a threat signal in accordance with given criteria.

In the light of this disclosure, the Board finds convincing the [opponent’s] submission that a standardized protocol is necessary for the communication between remote receiver and command centre. Thus, the feature concerning the standardized protocol is either implicit to the disclosure of D1 or trivial for a skilled person. [3.6]

Features [l] and [m] of claim 1 concern a TOA measurement on the basis of two cells with synchronised internal time.

In its interlocutory decision […], the opposition division (OD) considered that documents D1 and D3 did not render obvious the use of two different cells for a TOA measurement. In its view, although TOA measurements were known in the art at the priority date of the present patent, a skilled person got no incentive from the prior art to apply this technique to the system of D1. Even if the skilled person tended to introduce this technique, he/she would not consider the claimed solution of providing the bearing of a phenomenon by comparison of signals of two distant cells. On the contrary, the more straightforward way would be to introduce the TOA technique in the setup shown in D1 […], i.e. to rely on a measurement based on two antennas of the same cell, which could be placed far enough to give sufficiently accurate results. Indeed, the use of antennas of two different cells had the drawback that an accurate time determination in both cells was needed. Such a feature, however, was not disclosed, either explicitly or implicitly, in D1. Rather, the arrangement of D1 was based on a single cell and had the advantage that the accurate time determination was not necessary.

The Board would agree with this argumentation on the basis of the disclosure of D1 only. The OD, however, had no knowledge of textbook D7 filed with the notice of appeal.

D7 […] is concerned with the interception of radar signals, in particular with the issue of how to use various receivers in interception applications. Other major topics concern direction finding and location. Chapter 5, which deals in extenso with the issue of emitter location techniques, presents two major approaches. Emitter location estimation using multiple angle-of-arrival (AOA) measurements is the classic approach, the basic idea of which changed little since the 1940s. The time-difference-of-arrival (TDOA) technique is more complex, and its use is more recent and much less widespread. According to the leading-edge (LE) TDOA technique, the arrival time of the leading edge of a radar pulse is determined at a receiver. The difference between the arrival times of the same pulse at two widely separated ground-based sites gives the TDOA with respect to the baseline between the two receivers. This TDOA measurement establishes an iso-delay line on the surface of the earth that passes through the emitter location. A similar TDOA measurement with respect to another baseline establishes another iso-delay line. The intersection of these iso-delay lines determines the location of the emitter (Figure 5-8).

The [patent proprietor] contested that document D7 reflected common general knowledge […]. Moreover, in its view, the outcome of the present case would not be changed by the consideration of D7 […].

Thus, two issues need to be considered. First, whether D7 reflects common general knowledge. Second, whether a skilled person would consider introducing the leading-edge TDOA technique according to D7 into the system of surveillance known from D1.

With regard to the first issue, the jurisprudence of the boards of appeal has defined the common general knowledge of a skilled person working in a particular technical field as being normally represented by the content of encyclopaedias, textbooks and dictionaries on the subject in question (T 890/02 [2]).

Three aspects have been identified for assessing the common general knowledge of the skilled person (T 890/02 [3]). Firstly, the skills of such a person include not only basic general knowledge of a particular field of technology, but also the ability to look up such knowledge in encyclopaedias, textbooks and dictionaries. Secondly, it cannot be expected that, in order to identify this common general knowledge, the skilled person will carry out a comprehensive search of the literature covering virtually the whole state of the art. No undue effort in such a search can be required from the person skilled in the art. Thirdly, the information found must be unambiguous and usable in a direct and straightforward manner without doubts or further research work.

In the present case, the Board does not have any reason for diverging from this jurisprudence that would lead to the conclusion that textbook D7 represents common general knowledge. In particular, it may be expected that the skilled person, designing systems of surveillance such as the one known by D1, would be aware of a textbook like D7 dealing inter alia with radar emitter location by a TDOA technique that represents an embodiment of the present invention covered by the claimed subject-matter. Thus, contrary to the [patent proprietor]’s view, the Board considers that D7 represents background knowledge.

With regard to the second issue mentioned above, the [opponent] submitted in the grounds of appeal […] that D1 described an operational system. At the publication date (1979) of this document and a fortiori at the time the described system was designed, computers with a computational power sufficient for making TDOA measurements on the basis of two cells with synchronised internal time were not yet available. For this reason, the system of D1 relied on AOA measurements. At the priority date of the present patent (1995), however, a skilled person, knowing from D7 that the TDOA technique could be used in systems like the one known from D1, would immediately consider that such a technique represented an obvious alternative to the AOA measurements on which the system of D1 relied. D7 itself prided support for this conclusion. Indeed, AOA and TOA/TDOA measurements were disclosed as two viable alternatives […] that might even be combined […].

The [patent proprietor] did not dispute that the TDOA technique per se was known. What was relevant, however, was its application in a system of surveillance as claimed. No document on file suggested such an application. On the contrary, the complexity of the TDOA technique, which was acknowledged in D7, played an essential role against its application and should be duly considered when contemplating the combination of D1 and D7.

The [opponent]’s submissions are substantially based on the approach that the skilled person was led by the technical progress to consider alternatives to the AOA technique disclosed by D1. This view is not invalidated by the [patent proprietor]’s argument concerning the complexity of the TDAO technique. Indeed, this drawback would be compensated by the ongoing computer progress, on the one hand, and by the improvement in location accuracy that may be achieved […], on the other hand. The former aspect is clearly at the basis of the development of the more recent TDOA approach […], which may regarded as an alternative to the classic AOA approach, as the [opponent] convincingly submitted. It should also be taken into consideration that D7 […] points out that, in an operational emitter location system, the AOA approach will be needed along with the TDOA approach. In a dense environment of emitters, it will be difficult to determine which pulse is coming from which emitter at separated receiver platforms. By using the AOA approach, only those pulses having appropriate bearings need be considered in the TDOA processing. In the Board’s view, this disclosure gives the skilled person a hint at integrating the TDOA processing in the system of D1 rather than replacing the disclosed AOA technique.

Therefore, D7 represents common general knowledge of the skilled person, discloses features [l] and [m] of claim 1, and incites the skilled person to complement the system of surveillance of D1 with these features. [3.7]

In conclusion, keeping in mind the aggregation character of the features of claim 1 of the maintained patent, as mentioned above, the subject-matter of claim 1 at issue lacks inventive step (A 56) in view of documents D1, D3 and D7. [3.8]

To read the whole decision, click here.

T 358/08 – Let’s Not Change

Does the change of wording between R 64 EPC 1973 and R 99 EPC 2000 have an impact on how a notice of appeal and/or a statement of grounds of appeal has to be drafted? That is the question the Board deals with in the present decision.

If you are happy with a short answer, it’s “No”.

If you want to know why, please read on.

[1.1] Before the OD the appellant requested maintenance of the patent as granted (main request) alternatively maintenance of the patent on the basis of a first auxiliary request. The OD rejected both requests and revoked the patent.

In its notice of appeal filed on 13 February 2008, the appellant stated: “... we hereby appeal against the decision of the OD ... We ask that the decision of the OD be set aside and the patent maintained.”

[1.2] Even when construed in the context of what had taken place in the proceedings, it cannot be determined from the notice of appeal in precisely what form the appellant wished the patent to be maintained. Only when the appellant filed its statement of grounds of appeal did this become clear.

[1.3] R 99 EPC 2000 is applicable to the present appeal. […]

[1.4] The issue which arises is whether the notice of appeal in this case complied with the requirement that it should contain “a request defining the subject of the appeal.” Taken by itself, it is not easy to say what this requirement entails. The words must therefore be construed in the context of the other provisions of the EPC 2000 to discover the true meaning of the expression, but help may also be obtained by examining:

(a) what the position was before the new rule was introduced and

(b) any relevant travaux préparatoires.

The expressions used in German and French texts do not take the matter any further […]

Position before coming into force of the EPC 2000

[2] R 99 is to be compared to the previous relevant rule, R 64 EPC 1973[…].

[2.1] As helpfully suggested by the appellant, the changes can be more easily appreciated by comparing the rules in tabular form:

[2.2] As to what were the requirements of R 64 when it stated that the notice of appeal should contain “a statement identifying ... the extent to which amendment or cancellation of the decision is requested”, the answer becomes apparent from considering decisions of the Boards of Appeal which dealt with the construction of notices of appeal.

[2.3] As to this, it was recognised that the requirements of R 64 were formal in nature only […] and that a notice of appeal should be construed objectively to determine its content […]. The “extent” to which the impugned decision was requested to be amended or cancelled could therefore often be inferred, even when the notice of appeal contained no express statement in this respect. Thus where, for example, the notice of appeal stated merely “An appeal is hereby lodged,” or words to similar effect, this was often construed in the context of the case as a request to set aside or cancel the decision in its entirety; this was “the extent to which amendment or cancellation of the decision” was requested. […]

Having reviewed a bunch of decisions, the Board continues:

[2.4] In the great majority of cases, therefore, the requirement to state the extent to which amendment or cancellation of the decision was requested was somewhat toothless. Almost always the appellant wanted the decision set aside in its entirety and replaced by a different order. It was for this reason that the Boards of Appeal were able to construe very basic notices of appeal as satisfying the provisions of R 64(b). Where, however the decision contained two elements, e.g., an order relating to the patent and an order as to costs, the rule now had real bite. The notice of appeal had to say whether both elements were being appealed or only one, and the course of the appeal proceedings was thereby determined […].

[2.5] At first sight, some cases, including some of the above, might appear to go further, since they also say that such a notice of appeal (e.g., in the form “an appeal is hereby lodged”) also implicitly included a request to grant the last request before the Division below. […]

[2.6] However, the Board does not read into these decisions any statement that the notice of appeal should in fact have contained a request, even if only implicit, as to the order which the Board of Appeal was being asked to make, whether it be a request to grant the last request before the Division below or some other request. The decisions merely say how, in these particular cases, the Board construed the notice of appeal.

[2.7] Such a requirement would have given rise to difficulties, as exemplified by the facts of the present case, where an applicant-proprietor merely requested that the patent “be maintained” and it could not be objectively determined from these words, even in the context of what had taken place at first instance, in what form the proprietor wished the patent to be maintained, in particular, whether the proprietor wished the patent to be maintained as granted or in accordance with its auxiliary request before the Division or on some other basis.

[2.8] That this was not in fact a requirement of R 64(b) is made clear by other decisions of the Boards of Appeal, which are to the effect that although the notice of appeal must specify whether it is being requested that the decision be set aside in whole or in part, in the case of an appeal by an applicant or patentee the precise form in which the patent is requested to be granted or maintained is a matter for the grounds of appeal. […]

Again the Board cites and comments a whole series of decisions. It then continues:

[2.12] The Board therefore concludes that R 64(b) did not require, in the case of appeal by an applicant or proprietor, that the notice of appeal should contain, whether expressly or implicitly, a statement as to the form in which the appellant was requesting the Board of Appeal to grant or maintain the patent. This was a matter for the grounds of appeal. […]

The Board then deals with the travaux préparatoires for the EPC 2000:

[3] The EPC was revised following the Diplomatic Conference of November 2000 in the form a new text adopted by the Administrative Council in June 2001. As regards the time limits and the form of appeals to the Boards of Appeal, minor changes were made to A 108, […]

[3.2] It does not appear from the [declared overall objective of these revisions] that it was one of the purposes of these changes to alter the way in which appeal proceedings were conducted, whether in regard to the contents of the notice of appeal or the grounds of appeal.

The Board then delves into the details of the travaux préparatoires. It comes to the following conclusions:

[3.13] In conclusion, although the travaux préparatoires are not entirely clear:

[3.13.1] They do not suggest that the existing position in relation to the requirements of the notice and grounds of appeal, summarised above, was giving rise to problems or criticisms.

[3.13.2] They do not indicate an intention to make a substantive change in the requirements of the notice or grounds of appeal in this area, a change which would have far-reaching effects for many appeals.

[3.13.3] In general, they show an intention to bring the wording of the rules in relation to notices and grounds of appeal into line with the practice as developed by the Boards of Appeal.

[3.13.4] It appears that the requirement which is now found in new R 99(1)(c) to state “the subject matter of the appeal” was being equated with the former requirement of R 64(b) that the notice of appeal should contain a statement of the extent to which the amendment or cancellation of the decision is being requested as this requirement had been interpreted by the Boards of Appeal.

Finally, the Board gets down to a construction of R 99:

[4] Generally, the requirements as to the notice of appeal under R 99(1) and the statement of the grounds of appeal under R 99(2) must be read together to try and arrive at a coherent and sensible structure. The requirements must also be construed as applying to appeals of all possible types and not just appeals by a proprietor, which is the focus of the present appeal.

[4.1] As a further general remark, the Board takes into account that if it was required that the notice of appeal by an applicant or proprietor should contain a request for the grant or maintenance of the patent in a specified form, it is not clear what the position would be if the appellant later wished to amend this request, whether to broaden the claims or restrict them. On the assumption that the appellant was able to amend the request, then “defining the subject of the appeal” at the outset by reference to a set of claims which later might change would serve no useful purpose. On the alternative assumption that the appellant was not able to amend the request, this would make appeal proceedings extremely inflexible and would also be contrary to the existing practice in appeals.

[4.2] On the contrary, if a proprietor must in the grounds of appeal at the latest specify the form in which the patent is requested to be maintained, the respondent will still know at a relatively early stage in the appeal proceedings what case it has to deal with and can frame accordingly any reply which it chooses to file under A 12(1)(b) of the Rules of Procedure of the Boards of Appeal (RPBA). The appeal will then be based on these documents (together with any communication sent by the Board and any answer thereto), subject only to any amendment to a party’s case which is thereafter allowed at the Board’s discretion (Articles 12(1), 13(1) RPBA). This system provides a logical and practical framework for determining such appeals.

[4.3] Turning to the rules themselves, as already pointed out, it is not immediately clear from the wording of R 99(1) what has to be contained in the notice of appeal. If, however, R 99(2) were to make it clear that certain matters are required to be included in the grounds of appeal then this would obviously make it easier to reach a conclusion that it was not necessary to include such matters in the notice of appeal, and thus what R 99(1)(c) means.

[4.4] Unfortunately, the wording of the R 99(2) also raises problems as to its meaning. Broken out, it reads as follows:

“In the statement of grounds of appeal the appellant shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based.”

[4.5] The first problem is that in some situations at least […] the rule requires the grounds to state “the extent to which the decision impugned is to be amended”. However, under R 64(b) , what appears to be the same requirement (a statement of “the extent to which amendment ... of the decision is requested”), had been part of the requirements of the notice of appeal, so that at first sight it would appear that this requirement has been moved from the notice of appeal to the grounds of appeal (assuming the requirement has not just been duplicated). As explained above, the requirement in R 64(b), being a part of the requirement to state “the extent to which amendment or cancellation of the decision is requested”, had been construed by the Boards of Appeal in a limited way as requiring the appellant merely to state whether it was requested that the decision be set aside in whole or part. If this requirement is now a requirement of the grounds of appeal, what is left as regards the requirements of the notice of appeal?

[4.6] Second, the wording of the rule is at first sight also curious because under R 64(b) a distinction appeared to be made between “amendment” of a decision and “cancellation” of a decision (“The notice of appeal shall contain ... a statement identifying ... the extent to which amendment or cancellation of the decision is requested”), these apparently being alternative forms of order which the appellant could request […]. This distinction appears at first to be perpetuated in the new rule in the form of a distinction between “setting aside” a decision and amending it to some extent, these again being alternatives. But if this is a valid distinction, why should the appellant now be required to indicate the reasons for setting aside the decision impugned, but not any reasons for amending it to any extent?

[4.7] The versions of R 99(2) in the German and French texts do not appear to take the matter any further. […]

[4.8] These considerations are puzzling, not least having regard to the fact that it does not appear from the travaux préparatoires to have been the intention to create a substantive change in the practice in this area.

[4.9] The Board considers that the answer to this puzzle is to be found by considering the forms of order normally made on appeal. When an appeal is successful the order made by the Boards of Appeal is often in the form: “The decision under appeal be set aside and the patent is ordered to be maintained as granted/in amended form/revoked”, etc, and this is also the common form of requests made by appellants. The Board considers that R 99(2) EPC 2000 should be understood in this light, and as requiring the appellant to say, first, why the decision under appeal was wrong and should thus be set aside and then, second, what the appellant wants the Board of Appeal to order in its place (if anything). […]

[4.10] Although it is not decisive for present purposes, the RPBA are consistent with this approach, although the wording is not precisely the same. A 12(2) RPBA provides inter alia that the statement of grounds of appeal shall contain an appellant’s complete case and set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld. Although the rules do not expressly state that a proprietor/applicant-appellant should state in what form it is requested that the patent be maintained, the rules are of course framed in general terms to deal with all forms of appellants, not just applicants and proprietors. The requirement that an appellant state its “complete case” in the grounds of appeal can be understood as requiring inter alia a proprietor/applicant-appellant to indicate the extent to which the decision under appeal is to be amended, if this is not already clear.

[4.11] The reason why R 99(2) is framed as it is, as compared to the R 64 , can perhaps be understood on the basis that it was apparently considered, as appears from the travaux préparatoires considered above, that the wording of R 64(b) (“The notice of appeal shall contain ... a statement ... identifying ... the extent to which amendment or cancellation of the decision is requested.”) was not satisfactory, even though it had been interpreted by the Boards of Appeal in a relatively restrictive way that was not in fact giving rise to problems or objections. At the same, it was apparently felt that it was unsatisfactory that the rules did not expressly say anything about the grounds of appeal, even though the Boards of Appeal had developed an interpretation of what was required which again was not giving rise to problems or objections. R 99 was no doubt an attempt to restate the position using clearer language. The requirement that the notice of appeal should contain a request “defining the subject of the appeal” was no doubt thought to be a better description of the requirement that the notice should indicate whether the decision should be set aside in whole or part, since the effect of such a request was in fact to define the subject (the “extent” or “scope”) of the appeal. Again, it was no doubt thought that the requirement that the grounds of appeal should indicate the extent to which the decision was to be amended was an appropriate formulation of the requirement that the appellant should, where appropriate, state what order the appellant wanted the Board of Appeal to make in place of the order of the first instance department.

[4.12] This conclusion means that in the case of an appeal by an applicant or proprietor who wishes to have the patent maintained in a different form than that ordered by the first instance department, the grounds of appeal are required to contain a statement as to (“shall indicate”) the form in which the Board of Appeal is being requested to maintain the patent and thereby to alter the decision of the department of first instance.

This then also means that such a requirement cannot also sensibly be part of the requirements of the notice of appeal under R 99(1)(c), so that whatever the expression “a request defining the subject of the appeal” in R 99(1)(c) means (and it is not necessary for the Board to say precisely what it does mean), it cannot be understood as requiring this.

[4.13] The Board also does not have to consider how precise the indication in the grounds of appeal of “the extent to which [the decision] is to be amended” has to be, because in the present case it is not in doubt that the grounds of appeal contained a sufficiently precise indication, namely a request that the decision under appeal be set aside and the patent be maintained as granted or alternatively on the basis of sets of claims according to the first to third auxiliary requests which were filed with the grounds of appeal.

Summary and conclusion

[5] In the end, and taking all of the above matters into consideration, 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. R 99(1)(c) is satisfied if the notice of appeal contains a request, which may be implicit, to set aside the decision in whole or (where appropriate) only as to part. Such a request has the effect of “defining the subject of the appeal” within the meaning of R 99(1)(c).

In the case of an appeal by an applicant or proprietor, it is not necessary that the notice of appeal should also contain a request for maintenance of the patent in any particular form. This is something which relates to “the extent to which [the decision] is to be amended”, and which is therefore a matter for the statement of grounds of appeal under R 99(2).

[5.1] The notice of appeal in the present case contained the statement “... we hereby appeal against the decision of the OD ... We ask that the decision of the OD be set aside and the patent maintained.” In accordance with the principles set out earlier in this decision this is to be interpreted as a request to set aside the decision of the OD in whole. This request defined the “subject of the appeal” within the meaning of R 99(1)(c). The request “to maintain the patent” was not inconsistent with this but otherwise added nothing. [… T]he grounds of appeal contained an adequate indication under R 99(2) of the extent to which the decision was being requested to be amended.

[5.2] The appeal is therefore admissible.

To read the whole decision, please click here.

NB: This decision has already been commented on Laurent Teyssèdre’s blog.

Interpretative Spotlight: “added”

From time to time I shall dedicate a small bonus post to interpretative issues. Of course, these questions are strongly linked to their context and could be answered very differently in other cases. There is nothing like precedent in this domain. Nevertheless, I sometimes find it interesting to see to which conclusions the Boards come when putting claims under the microscope.

Claim 8 of the patent as granted read (in its English translation):

Process for the manufacture of a solution of dialkyl peroxydicarbonate in which the alkyl radicals contain 2 or 3 carbon atoms, characterized in that, in a first stage, a dialkyl peroxydicarbonate in which the alkyl radicals contain 2 or 3 carbon atoms is manufactured by reacting, in water, appropriate quantities of alkyl haloformate with an inorganic peroxide in the presence of an inorganic salt added (French original: ajouté) in sufficient quantity to increase the density of the aqueous reaction mixture and, in a second stage, the dialkyl peroxydicarbonate manufactured is isolated by extraction by means of a water-insoluble solvent in order to produce a solution of dialkyl peroxydicarbonate in this solvent.

The word “added” was not present in the corresponding claim of the application as filed. The opponent pointed out that this addition was a violation of A 123(2). The patent proprietor argued that by inserting this term it had limited the claim to situations where the inorganic salt was added voluntarily, in contrast to in-situ production.

Here is what the Board had to say:

[3.2] The argument of the [patent proprietor] according to which the claimed addition of inorganic salt is limited to situations where the operator voluntarily adds [the salt] but does not include addition by in-situ production is not convincing. As a matter of fact, in the absence of any specification (précision) in the claim and in the patent under consideration, this term is to be interpreted in its broadest possible meaning. It, therefore, covers all forms of adding inorganic salt that are conceivable in the context of the claimed processes.

The Board came to the conclusion that A 123(2) had not been violated, but the claim was interpreted broadly and found to lack novelty over the prior art.

To read the whole decision T 1374/06 (in French), please click here.

T 2016/07 – Two Is Not A Magic Number

At the end of the oral proceedings before the Board, the patent proprietor requested that the following question be referred to the Enlarged Board of appeal:

Can inventive step be negated if more than two documents have to be combined [in order to come to this conclusion] and if one claim feature is not at all known from the state of the art?

[9.4] According to the established case law of the Boards of appeal, the assessment of inventive step is usually carried out in accordance with the methodology provided by the problem-solution approach.

In doing so, the first step is to determine the state of the art that is closest to the claimed subject-matter. Based on the effect of the features that distinguish the claimed subject-matter from the closest state of the art (distinguishing features) it has to be established whether and, if applicable, which technical problem is solved by the claimed subject-matter.

When assessing whether the claimed solution is obvious, prior art other than the closest state of the art, including the common general knowledge, may have to be taken into account.

In doing so, it has to be checked in each individual case to which extent there is an incitation to take into account such prior art in combination with the closest state of the art. Thereby it can be ensured that the assessment of inventive step is not based on hindsight resulting in further prior art being taken into consideration based on knowledge of the claimed subject-matter and combined with the closest prior art.

The number of documents to be taken into account when the problem-solution approach is applied is not limited and depends on the circumstances of the individual case. In addition to the complexity of the claimed subject-matter, one has to take into account, for instance, whether the claimed subject-matter solves one or several problems and whether these problems are independent with respect to each other. The same holds true for the features of the claimed subject-matter solving the corresponding problems. The same also applies to the prior art that is taken into account when providing evidence for the existence of alternative solutions.

[9.5] Therefore, the question formulated by the [patent proprietor] concerns an aspect that depends on the circumstances of the individual case under consideration, i.e. the combination of features of claim 1 under consideration and the prior art that is to be taken into account, which aspect concerns facts underlying the present proceedings only.

Thus the question to be referred can only be answered by taking into account the facts underlying the present proceedings. In contrast to the requirements laid down in A 112(1) it does not contribute to ensuring uniform application of the law, nor is it a point of law of fundamental importance.

[9.6] This is also true for the aspect of the question to be referred according to which a feature of the claim under consideration is not at all known from the prior art.

The abovementioned application of the problem-solution approach requires that also for such a feature – as a feature of the claim under consideration – it has to be established whether it has the alleged technical effect. Based on this it needs to be examined, taking into account the problem attached to such a distinguishing feature, to which extent this feature, in combination with the other features of the claim to be examined, can be considered to involve an inventive step.

Therefore such a feature has no special status for the assessment of inventive step. The same applies for the assessment of the request for referral under consideration.

In addition it should be noted that it is not unusual to consider claimed subject-matter as obvious although not all features are known from the state of the art to be taken into consideration and which contains several documents. For instance, the skilled person to be taken into account also possesses knowledge and know-how that is common in the technical field [under consideration].

Therefore, the request for a referral to the Enlarged Board is to be dismissed.

NB: This decision (see in particular point 6.5 of the reasons, 4th and 5th paragraphs) also contains some interesting statements concerning the use of industrial designs (Geschmacksmuster) as closest prior art. The patent proprietor argued that the outward appearance of the claimed container could not possibly be rendered obvious by the container disclosed in industrial designs O1 and O1’. The Board rejected this argument by pointing out that the skilled person knew that in an industrial design the outward appearance was prominent and that the industrial design precisely had the effect of making the skilled person aware that providing and arranging grooves was a possibility for obtaining an aesthetic design. In other words, the industrial design could be an incentive for creating and modifying the outward appearance.

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

T 31/08 – An Exception To An Exception

[2] The request as amended during the oral proceedings (OPs) is admitted into the proceedings. The single independent claim of this request consists in the combination of claim 1 as granted combined with the features of dependent claim 17 as granted. Claim 17 as granted refers to subject-matter that had not been attacked in the opposition.

[2.1] Article 13 of the Rules of Proceedings of the Boards of appeal (RPBA) leaves it to the discretion of the Board not to consider any amendment to a party’s case after it has filed its grounds of appeal in particular if the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy speak against it. According to the Board the new subject-matter submitted is not too complex, nor do the current state of the proceedings and the need for procedural economy speak in favour of dismissing the request. The Board is of the opinion that this request is an adequate reaction to the preliminary opinion of the Board as exposed in the summons, wherein the patentability and the admissibility of all requests pending at that time was questioned.

[2.2] The Board cannot endorse argument of the [opponent] according to which the request filed during the OPs also violated Article 12(4) RPBA. Article 12 explicitly and exclusively refers to the notice of appeal and any reply. In the notice of appeal at first the patent was defended as granted. The [patent proprietor] then again submitted the request which it had withdrawn during OPs before the Opposition Division (OD), in the form of auxiliary request III filed together with the notice of appeal. Later on, the [patent proprietor] has withdrawn this request during the appeal proceedings, for reasons the Board can understand, and has filed a new request which is not identical with auxiliary request III filed together with the notice of appeal and not even a subset of this request. This request has been submitted first during the OPs. Therefore, the Board only has to decide, in the exercise of its discretion under Article 13 RPBA, if the request is admitted, having taken into consideration the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.

[3] According to decisions G 9/91 and G 10/91 [10] the examination of an opposition is limited to the extent to which the patent is opposed in the notice of opposition. If the opponent limits the opposition to particular subject-matter (einzelne Gegenstände), the residual subject-matter is not subject to any “opposition” within the meaning of A 101 and A 102 EPC 1973 nor are there “proceedings” within the meaning of A 114 and 115 EPC 1973 in existence concerning such subject-matter. However, according to the Enlarged Board, there is one limitation of this principle: “even if the opposition is explicitly directed only to the subject-matter of an independent claim of a European patent, subject-matters covered by claims which depend on such an independent claim may also be examined as to patentability, if the independent claim falls in opposition or appeal proceedings, provided their validity is prima facie in doubt on the basis of already available information” (point 11 of the reasons).

[3.1] In the present case the opposition is not directed against the subject-matter of the single independent claim only, but also against the subject-matter of several of the claims dependent from this claim. According to the notice of opposition, the opposition is directed against the patent as granted within the scope of independent claim 1 and claims 2 to 9, 11, 12, 25, 26, 28, 31, 33 and 34 that depend from this claim. The [opponent] explained during the oral proceedings that the opposition was in fact not directed against claim 17 as granted.

The features of claim 17 define a wedge mechanism (Keilgetriebe) that is provided in order to produce the movement of the pivotal element. Claim 13, which has not been opposed either, also claims a wedge mechanism for restraining certain parts. Claim 18 provides that the same wedge mechanism serves for displacing the pivotal element and for restraining. Claims 19 and 20 describe a motorised drive driving the wedge mechanism. None of the claims against which the opposition was directed deals with such a mechanism or its drive. Therefore, the Board is of the opinion that the opponent has limited the opposition to particular subject-matter (einzelne Gegenstände) cited in the notice of opposition, whereas other claims, among which the claims defining the wedge mechanism and its drive, have not been referred to and, therefore, are not subject to any “opposition” within the meaning of A 101 and A 102 EPC 1973 nor are there “proceedings” within the meaning of A 114 and 115 EPC 1973 in existence concerning such subject-matter.

[3.2] Considering the fact that the opponent has not attacked the single independent claim only but also some of the dependent claims, the exception provided in G 9/91 and G 10/91 [11] cannot be applied in the present case. Therefore, the principle exposed by the Enlarged Board in these decisions (point 10 of the reasons) concerning the legal and factual framework, within which the substantive examination of the opposition shall be conducted, is to be applied. Thus the Board is not free to perform a substantive examination of present claim 1 which is a combination of claims 1 and 17 as granted. […]

[4] The patent is to be maintained as amended.

The Board thus confirms the approach taken in T 653/02 and T 646/02.

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