T 182/09 – It’s Independence Day

In this decision the Board had to deal with the admissibility of late filed document D14, a scientific publication, and related procedural questions (postponement of the oral proceedings (OPs), remittal).

Admissibility of document D14 into the proceedings

[2] Document D14 was filed by the [opponent] with the letter dated 2 December 2009, i.e. after filing its statement of the grounds for appeal. The [patent proprietor] objected to its introduction into the appeal proceedings for the sole reason that it was filed at a late stage of the proceedings.

According to A 114(2) the EPO may disregard facts or evidence which are not submitted in due time by the parties concerned. Thus, any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the Board’s discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy (Article 13(1) RPBA).

In addition, as respects admissibility of late-filed documents, it is established jurisprudence of the boards of appeal that a crucial criteria to be taken into account is whether the document is prima facie relevant and whether there is proper justification for its late filing to forestall tactical abuse.

[2.1] Document D14 is a two-page document titled “a hybrid network of synthetic polymer mesh and collagen sponge”.

This network is prepared by forming collagen sponges with interconnected microporous structures in the interstices of the synthetic polymer mesh […]. This hybrid network is associated with skin fibroblasts, which are biological components […]. The mesh made from a biocompatible polymer is shown in figure 1a. Figures 1b and 1c shown the collagen sponges having pores with an open cell pore structure interconnected in the interstice of the reinforcing component.

It therefore appears immediately that the structure shown in figure 2 of this document is novelty-destroying for claim 1 of the main request.

[2.2] The [patent proprietor] argued that document D14 was prima facie not relevant since the mesh density was not disclosed. Furthermore the foam component was not integrated with the reinforcing component such that the pores of the component interlock with the reinforcing component, figure 1c of document D14 showing even that the collagen was only on the top face of the mesh.

However, the mesh density of the structure can be determined from figure 1a of document D14

Fig 1a

which reveals that it clearly falls within the broad claimed range of 12 to 80%.

Figures 1b and 1c of document D14

Fig 1b

Fig 1c

clearly show that the collagen sponge is located on both faces of the polymer mesh and is integrated with it such that the spores of the sponge penetrate the polymer mesh and interlock with it. Moreover, it is indicated on page 1505, bottom of the left-hand column, that the polymer mesh was embedded in the collagen sponge sheet so that the fibre bundles of polymer mesh and the collagen sponges were alternately chained.

[2.3] Accordingly, document D14 is highly relevant since it unambiguously discloses the subject-matter of claim 1 of the patent as granted.

[2.4] In addition, the Board is not aware of any facts indicating that the filing of document D14 was deliberately delayed for tactical reasons. According to the [opponent], this document was filed promptly after it was brought to its attention from proceedings before the United States Patent Office. Furthermore, the [opponent] explained that it had no interest at all in delaying the proceedings, what the [patent proprietor] did not challenge. Therefore, the Board is not convinced that the late filing of document D14 was caused by tactical reasons as alleged by the [patent proprietor].

[2.5] The [patent proprietor] further argued that since this document was published by the Royal Chemical Society, it was easily retrievable by a simple search. Thus, the late filing of the document was due to the [opponent’s] negligence to carry out a comprehensive search during the opposition period. Also for this reason, document D14 should not be admitted into the proceedings, independently of its relevance.

However, whether a document can be easily retrieved by search cannot be objectively assessed and therefore cannot be a significant criterion for its admissibility into the proceedings. In this respect, the Board notes that, despite of its relevance […], document D14 was not cited in the application as filed, nor in the EPO Search report, and the [patent proprietor] was apparently not aware of it.

[2.6] The Board decides consequently to admit document D14 into the proceedings.

Request to postpone OPs and to set
a new deadline for filing substantive comments

[3] The [patent proprietor] argued that the Board should first decide on the admissibility of the late filed document D14 into the proceedings and then set a new deadline for the [patent proprietor] to consider the substantive content of the document.

However, since the relevance of a late filed document is an essential criterion for deciding on its admissibility into the proceedings and since any decisive issues constituting the decision may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comment (A 113(1)), the relevance of document D14 must have been considered by all parties to the proceedings, i.e. including the [patent proprietor], before the Board decides on its admissibility. Accordingly, the [patent proprietor] cannot request to consider the relevance of a late filed document only after its admission into the proceedings has been decided.

The [patent proprietor] requested a new deadline to file its substantive response to the [opponent’s] objections based on document D14, or the arrangement of second OPs to discuss these substantive issues, since it did not know before the OPs the Board’s opinion on the admissibility of document D14 into the appeal proceedings.

However, a party which wants a decision in its favour must play a full part in proceedings and submit arguments in support of its case on its own initiative and at the appropriate time (see R 2/08 [8.5; 9.10]). It is part of the professional task of representatives to decide independently – that is, without assistance from the Board – how to pursue their cases (see T 506/91 [2.3]).

In the present case, the [patent proprietor] has deliberately chosen not to comment on the substance of document D14 and not to respond to the [opponent’s] objection of lack of novelty based on document D14, although this objection was known to him for more than two years. In the communication accompanying the summons to OPs, the Board indicated that document D14 was highly relevant and could even be considered as novelty-destroying and that the parties should be prepared to handle all the litigious issues during these OPs. The [patent proprietor] had sufficient time before the OPs to consider the objection of lack of novelty based on document D14 raised by the [opponent].

Under these circumstances, the [patent proprietor’s] requests to continue the appeal proceedings in writing, to set a new deadline for filing substantive comments or to postpone the OPs are refused.

Request for remittal to the department of first instance

[4.1] The [patent proprietor] requested that the Board remit the case to the first instance since the admission of document D14 into the proceedings created a fresh case. The document should be examined at two levels of jurisdiction, so that the [patent proprietor] is not deprived of the possibility of subsequent review.

Pursuant to A 111(1) the Board may exercise any power within the competence of the first instance or remit the case to that department. However, A 111(1) establishes no absolute right for parties to have matters raised in appeal proceedings examined by two successive instances; on the contrary, it leaves the Board of Appeal to decide upon a remittal in the light of the circumstances. Having arrived at the present stage of the appeal proceedings, the Board should therefore assess the appropriateness of a remittal.

In the present case, examination as to the requirement of novelty is made in respect of a two-pages document which was filed two years before the date of the OPs before the Board. The [patent proprietor] made no comment about the objection of lack of novelty raised by the [opponent] until the OPs before the Board although there was no ambiguity in the disclosure of the document, which immediately appeared novelty-destroying for claim 1 of the patent-in-suit.

Under the present circumstances, the Board exercises its discretion not to remit the case to the first instance, with the consequence that the conditional request of apportionment of the costs if the case is remitted does not apply.

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T 2311/10 – Shaking Pillars

The present decision contains some very interesting statements on the essentiality test formulated in T 331/87.

The appeal was filed after the Examining Division (ED) had refused the application under consideration.

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

Sanitary fitting comprising

(a)   an actuating device (28;228) for a control unit (22) for controlling the water temperature and/or the water flow rate in a water outlet (10);

(b)   a controllable mist generator (3) comprising

(ba) at least one mist outlet channel (12) that leads to a portion of the water outlet (10)

(bb) a water reservoir (13) that is connected to the water outlet (10);

characterised in that

(c)    the water reservoir (13) is connected to the water outlet (10) via a water fill channel (19) in which a water fill valve (20) allowing to control the water supply to the water reservoir (13) is provided;

(d)   the water reservoir is equipped with a water level sensor (17) that transmits a sensor signal to the control unit in order to close the water fill valve when the water level has reached the height of the water level sensor (17);

In what follows the Board discusses whether the amendment that led to this claim complies with the requirements of A 123(2):

*** Translation of the German original ***

Preamble

[2.1] In the preamble of present claim 1 the at least one mist outlet channel of the mist generator mentioned in the original claim 1 was specified so that it leads to a portion of the water outlet rather than to the outside atmosphere. It goes without saying that the portion of the water outlet of the sanitary fitting is surrounded by the outside atmosphere, too. Moreover, the preamble of claim 1 now describes a water reservoir of the controllable mist generator that is connected to the water outlet. The above amendments are based on original claims 1, 2, and 4 and, therefore, are considered to be admissible.

Characterising part

[2.2] The newly added feature of claim 1 essentially describes a water fill channel with a water fill valve provided between the water outlet and the water reservoir, as well as a water level sensor in the water reservoir for closing the water fill valve. The ED had decided that the added features were only found in the detailed description of the single embodiment, but only in combination with a great number of other features and that, therefore, this addition led to an intermediate generalisation of the embodiment. This was not admissible under A 123(2) because at least conditions II and III of the essentiality test, i.e. that the missing further features were not, as such, indispensable for the function of the invention in the light of the technical problem they served to solve, and that the replacement and removal of these features did not require any real modification of other features [to compensate for the change], were not fulfilled.

Assessment of an intermediate generalisation

[2.3] The expression “intermediate generalisation” (“Zwischenverallge-meinerung“) expresses the fact that the subject-matter of the amendment, although added to the claim features in order to limit the scope [of the claim], corresponds to a generalisation of a specific embodiment that had been disclosed in the original [application].

[2.4] As any admissible amendment, the assessment of intermediate generalisations is governed by the principle that the skilled person must be able to directly and unambiguously derive their subject-matter from the content of the application as filed as a whole (claims, description, drawings), taking into account information that the skilled person would find to be comprised in the content at the date of filing of the application (implicit disclosure).

Therefore, it is normally not possible to extract one or several single features of a disclosed embodiment from their context in the disclosure and to transform them into a claim. However, such a claim is admissible when said features unquestionably constitute a distinct functional unit in the embodiment. The Board follows the constant case law of the Boards of appeal according to which it has to be apparent without doubt to the skilled person considering the disclosure of the original application that there is no close functional or structural relationship between the extracted features and the features which had originally been disclosed in combination for that embodiment (see Case Law, 6^th edition, III.A.2)

The “essentiality test”

[2.5] When establishing the so-called “essentiality test”, T 331/87 [4-6] examined the omission of an “inessential” feature from an independent claim that had been filed with the original application, in particular considering (condition II – second point of the test) whether the problem solving effect of the claimed invention with respect to the prior art disclosed in the original application could still be obtained without that feature (see T 331/87 [7.1-4]).

As what matters in T 331/87 is the disclosure in the application, the problem mentioned in condition II can only refer to the problem disclosed in the application (corresponding to the function or effect of the feature as disclosed or apparent to the skilled person) but not a newly formulated problem in view of any prior art.

[2.6] As this is not always observed (also in the present case), there is a considerable risk of misapplying condition II of the test. The Board is of the opinion that this wrong application is also favoured by the fact that point 2 of the headnote of T 331/87, when isolated from the rest of the decision, apparently does not exclude using a problem that is new and formulated in view of prior art that has been cited at a later stage as a criterion for the way in which the invention is effective, and, therefore, for the “essentiality” of a feature that is to be deleted.

When the objective problem is modified after the filing of the application, and in particular when it is considerably reformulated in view of newly cited evidence, then the “essentiality” of a feature according to condition II – and thus the result of the essentiality test – varies considerably in the course of the proceedings. This it was caused the difficulties both the [applicant] […] and the ED […] faced when trying to reasonably apply condition II of the test, based on the headnote of T 331/87 only.

[2.7] But even when condition II is correctly applied, the Board has considerable doubts, at least regarding this aspect of the essentiality test, whether, in view of the narrow interpretation of the [expression] “same invention” according to the more recent case law of the Enlarged Board of appeal concerning the reasonable exercise of the priority right, such an approach (Denkansatz) can still serve as test criterion for the required assessment of the original disclosure of an amendment required under A 123(2) – which obeys the same principles as the right to priority; see G 2/98 [headnote, summary of the proceedings, point [9] of the reasons] and G 1/03 and G 2/03 [4].

The Board is of the opinion that it follows from G 2/98 that what counts for the assessment of the question whether a technical feature of an independent claim can be omitted is whether the skilled person can directly and unambiguously derive the corresponding teaching from the context of the original disclosure, in contrast to the essentiality test under T 331/87 which assesses the omission of an “inessential” feature – contrary to the principle of legal security developed in G 2/98 – according to whether it is related to the function or effect of the invention with respect to the prior art or not.

[2.8] For the sake of completeness, the Board notes that for condition III of the essentiality test (cf. T 331/87 [3]) according to which the replacement or removal of a claim feature is admissible provided that it does not require any real modification of other features [to compensate for the change], there is also a risk that it is applied in a wrong way (as in the present case […]) because it is not clear what is meant by “no real modification”. If what is meant is (as understood by the ED in the present case) that there is no modification whatsoever of any other feature of the embodiment, than the condition is trivial and almost never fulfilled (for instance, when a different water level sensor is used […]).

[2.9] Therefore, contrary to the opinion of the ED (and of the [applicant]), the Board considers the “three point or essentiality test” (cf. the Guidelines H-V 3.1 and H-V 3.2.1 (June 2012 edition)) to be of little help or even misleading in the present case for assessing whether the intermediate generalisation taken from the description for limiting [the claim] in view of the prior art that has been cited at a later stage is admissible. By doing so, the Board follows […] the basic approach concerning the application of the essentiality test in view of G 2/98 exposed in T 910/03 [3.4-5;6].

Assessment of the features newly added to the characterising portion

[2.10] According to […] the impugned decision of the ED the reason for the refusal of the then auxiliary request was to be found in the fact that the following features that were “structurally related to the incorporated features” had not been incorporated:

(a) There is an ultrasonic mist generator allowing to generate mist from water in the water reservoir.
(b) The mist generator comprises a mist channelling funnel (Nebelkanaltrichter), and the water level sensor is provided at the height of the bottom edge of the mist channelling funnel
(c) The water reservoir comprises a water overflow pipe (Wasserüberlauf) at the height of the water level sensor.

As the present main request corresponds to the then auxiliary request, it has to be decided whether the application as filed offers a basis for incorporating the characterising features without the above mentioned features (a) to (c).  

[2.11] As explained by the [applicant], in present claim 1 the water reservoir is not filled directly via the water supply but via the water outlet of the sanitary fitting.

The Board is of the opinion that the skilled person would unambiguously derive from the originally disclosed embodiment according to claim 4 […] that the water from the “water reservoir of the mist generator” is used for generating the mist, independently of which mist generator is used. It is only in a preferential embodiment that the mist is generated from water by means of an ultrasonic mist generator […]. Thus, in contrast to the opinion of the ED, in the exemplary embodiment of Figures 1 to 3 the mist can by generated in ways that differ from the “ultrasonic mist generator 14” […].

The Board is not aware of any functional or structural, let alone inseparable, relationship between the use of an ultrasonic mist generator in the water reservoir of the mist generator and the control of the water supply to the water reservoir via a water fill channel by means of a water fill valve […]. Also, providing a “mist channelling funnel 15” above the “ultrasonic mist generator 15” is, as argued by the [applicant], a merely optional measure and is not related in any way that is originally disclosed to the control of the water supply from the water outlet to the water reservoir of the mist generator […].

[2.12] Moreover, following the argumentation of the [applicant], the Board is of the opinion that the indication in claim 1, according to which the water level sensor in the water reservoir closes the controlled water fill valve “when the water level has reached the height of the water level sensor”, unambiguously describes the direct determination of the water level with respect to the sensor level and cannot, as argued by the ED […] encompass an indirect measurement of the water level via the water pressure above a pressure sensor provided at the bottom of the reservoir […]. The Board is not aware of any relationship between the control of the water supply to the water reservoir and the […] position of the water level sensor at the height of the bottom edge of the mist channelling funnel (which is not required), in view of the sensor function […].

Finally, the skilled person, using his technical knowledge, undoubtedly learns from the original documents that the disclosed “water overflow pipe 18” constitutes only an additional, and therefore advantageous, security measure in case the control of the filling of the water reservoir allowing to close the water fill valve in order to avoid an overflow of the reservoir fails; it is only when the water level sensor fails that the overflow occurs via an opening towards the outlet of the sanitary fitting […]. Therefore, the additional “water overflow pipe 18” is only a specific embodiment for the functioning of the water level sensor (and, as a consequence, for the control of the water supply to the reservoir) and thus can, in the opinion of the Board, be omitted.

Summary

[2.13] As a consequence, the Board reaches the conclusion that the skilled person directly and unambiguously derives the features in the characterising part of present claim 1 […] that have been taken from the description from the original disclosure of the application as a whole.

Thus the subject-matter or claim 1 fulfils the requirements of A 123(2).

Very interesting – I only regret that the Board did not discuss T 404/03, where Board 3.5.01 expressed doubts concerning the argumentation of T 910/03 (issued by Board 3.2.5).

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T 1994/11 – A Quick Shot

This is an appeal against the decision of the Examining Division (ED) to refuse the application under consideration for lack of novelty.

The notice of appeal was received on August 25, 2011.

On September 12, 2011 the ED found that the appeal was not to be rectified and that the case was to be referred without delay to the Boards of Appeal.

With a letter of October 24, 2011 the appellant filed a statement setting out the grounds of appeal together with sets of claims according to a new main request and new auxiliary requests 1 and 2.

[1] A 108 requires inter alia that a notice of appeal must be filed within two months after the date of notification of the decision and that a written statement setting out the grounds of appeal must be filed within four months after that date. In accordance with A 109(1), first sentence, if an ED whose decision is contested considers the appeal to be admissible and well founded it shall rectify its decision. It is evident that receipt of the statement of grounds of appeal is a prerequisite for an ED when applying the provisions of A 109(1), first sentence, to consider whether the appeal is well founded.

[2] In the present case, the ED issued the order to refuse interlocutory revision and to refer the case to the Boards of Appeal before any statement setting out the grounds of appeal was filed and before the expiry of the four month time limit for filing the statement of grounds.

By refusing interlocutory revision before the statement of grounds of appeal was filed together with amended claims according to a new main request and a new auxiliary request 1 and 2, the ED could not have considered whether these amended claims overcame the reasons for refusal before ordering that the case be referred to the Boards of Appeal.

[3] It is customary that an appealing party takes advantage of the two time limits provided for in A 108, first and third sentences respectively, by firstly filing a notice of appeal and later filing the statement of grounds and it has the right to fully exhaust those time limits. It is incumbent on the ED to wait until the filing of the full content of the statement of grounds or the expiry of the four month time limit, whichever comes first. In the present case the issuance of the order to refuse interlocutory revision before receipt of the statement of grounds deprived the appellant of the possibility of a fore-shortened appeal procedure provided by A 109 and amounts to a substantial procedural violation, see T 41/97 [5].

[4] However, despite the presence of a substantial procedural violation the board considers that it would not be equitable to reimburse the appeal fee under R 103(1)(a). The established procedural violation cannot have been causative in filing the appeal since it occurred after the notice of appeal had been filed.

[5] In accordance with Article 11 RPBA (OJ EPO 2007, 536 to 547) if fundamental deficiencies are apparent in the first instance proceedings a case is to be remitted to the department of first instance unless special reasons present themselves for doing otherwise. In the board’s view, no such special reasons are apparent and remittal is thus appropriate. Moreover, the appellant explicitly consented to the remittal to the department of the first instance.

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T 905/09 – Barbie Is Lonely, Buy Me A Ken

Sometimes you get the impression that the members of the Board must have had a good laugh ...

The appeal was filed after the Examining Division had refused the application under consideration.

Claim 1 of the main request before the Board read:

An electronic mail communication method performed by a transmission control apparatus (30), the method comprising the steps of:

receiving a signal from a mobile telephone defining an ID code assigned to an anthropomorphized object comprising a stuffed animal toy and an electronic mail address for an owner of the anthropomorphized object, the ID code having been input by the owner via a display of the mobile telephone; and

electronically generating a mail text related to said ID code and sending said mail text as an electronic mail purporting to be from the stuffed animal toy to the owner, wherein the mail text comprises a conversational text expressing feelings including characters, signs, graphics, voices or sounds.

The Board found this claim to lack inventive step:

[1] The invention is concerned with generating and sending an electronic mail (email) to the owner of a so-called “anthropomorphized” object, especially a stuffed animal toy, so that the email is perceived as having been sent by the object. To enable this the user enters - via a mobile telephone - an ID code “associated with” and thereby identifying the object of interest and an email address to which the email should be sent. According to the main request, the email “purport[s] to be from the stuffed animal toy”, is “related to said ID code” and comprises “conversational text expressing feelings”. According to the auxiliary request, the email is generated based on “attribute information” for the object and for its owner, stored in respective tables, on predefined texts also stored in a table, and on grammar rules. […]

Inventive step

[4] It is undisputed that the claimed invention consists of a mixture of so-called technical and non-technical features but has, as a whole, technical character, for instance by virtue of requiring an email to be sent. For this situation, it is established jurisprudence of the boards of appeal that inventive step has to be assessed by taking account of all those, but only those features which contribute to the technical character of the invention, and that an aim in a non-technical field which the claimed invention aims to achieve may appear in the formulation of the technical problem to be solved according to the problem-solution-approach (see esp. T 641/00 [headnotes]).

[5] Therefore, before the inventive merit of the claimed invention can be assessed, it must be determined in which technical field the invention makes a contribution and which technical problem the claimed invention solves.

Technical field

[6] The appellant argues that the invention belongs to the field of stuffed animal toys or dolls. In this field, “talking dolls” are known which exhibit enhanced anthropomorphism over normal dolls by communicating electronically with their owners. Assessment of the inventive step of the invention should, so the appellant, start from such a doll and appreciate that the invention enhances its anthropomorphism further with technical means, and with a limited increase in development and production cost […]. To solve this problem, the skilled person in this field would modify the sound clips the doll is able to play back, for example by recording new sentences which purport to express the doll’s feelings. However, it would not be obvious for the skilled person to switch to an entirely different communication medium such as email.

[7] The board does not follow this argument.

[7.1] The invention relates to the stuffed animal toy only by way of the ID code identifying it and the content of the generated email which “purport[s] to be from” the toy and to express its “feelings”.

[7.2] According to the claims, the ID code is “assigned to” the toy in an unspecified way. The description discloses that the ID code may be printed on the back of the price tag […]. Otherwise, the toy need not be modified at all to enable the claimed invention: The registration of the ID code is done by the owner, the email is generated in the “transmission control apparatus”, and the illusion that the email is from the toy is created in the mind of the receiver of the email […].

[7.3] The board agrees with the appellant that talking dolls create an illusion, too, and that the owner of such a doll must also be willing to accept the sound clips as being spoken by the doll (or, in the case of small children, unable to notice that they are not). However, a talking doll requires the provision of constructional elements such as a recording device, a loudspeaker, batteries, and, possibly, sensors or timers.

[7.4] In contrast, the claimed invention applies to any given stuffed animal toy alike and it does not change the toy’s design or production at all. The development and production departments need not even be aware of the claimed registration or the sent emails.

[7.5] The board therefore rejects the appellant’s assertion that the invention makes a contribution in the field of physical toys and dolls.

Technical and non-technical features

[8] In the board’s view, the following features do not constitute or imply any technical limitations of the claimed subject matter.

[8.1] It is of no technical relevance for the invention whether the email address belongs to the owner of the toy or any other person.

[8.2] The ID code serves to select and/or generate the text to be sent to the user. Beyond that, it does not have any impact on the claimed invention that the ID code is “assigned to” a specific stuffed animal toy. As already argued above, the invention does not depend on the nature of the object. Hence, it is not a technical feature of the claim that the ID code is “assigned to” a physical toy.

[8.3] If the alleged effect of enhanced anthropomorphism is actually achieved by the invention, then due to the fact that the generated email “purports to be from the stuffed animal toy”, is held in a conversation tone and expresses “feelings”. The extent to which this effect is achieved depends, on the one hand, on the receiver’s mental disposition to accept the illusion and, on the other hand, on the specific content of the email, i.e. which words are used. A complete loss of content may render the communication meaningless for the receiver but does not affect the technical working of the claimed invention. Thus, the content of the email constitutes mere “cognitive data” in the terms of T 1194/97 [3.3] and therefore does not contribute to the technical character of the claimed invention.

Technical problem

[9] Accordingly, the board considers as the objective technical problem solved by the claimed invention how to communicate to the owner of a given stuffed animal toy customized information purporting to come from the toy and express its feelings. It is to be noted that this is not a problem of improving a toy in any way, so that the relevant skilled person is not a toy designer. Rather he or she is a communication engineer.

[9.1] In the board’s view, the motivation for addressing this problem may be a marketing idea for affective advertising (“Your cuddly bear is cold, get me a jacket.” or “Barbie is lonely, buy me a Ken.”). The description in fact discloses the option of using the invention for delivering news or advertisements to the users who, due to the conversational and emotional tone of the text, “can accept” them “without feeling any mental resistance” […].

[9.2] The appellant argues that this perspective takes a distorted view on the invention because it must already have been made before the marketing department can “hijack” it for targeted advertising.

[9.3] The board disagrees with this argument.

[9.3.1] First, marketing is to a large degree a matter of psychology so that marketing experts can realistically be assumed to be familiar with affective concepts. Moreover, the idea of using conversational tone and emotionalised content for targeted advertisement, for which customers may have to register, is a rather well-known marketing scheme (imagine, say, a car dealer offering a new set of summer tyres at the first signs of spring). Considering the invention as the implementation of a given marketing concept is thus, in the board’s view, a realistic perspective, beyond the fact that it is consistent with the description.

[9.3.2] Second, and more importantly, the reference to marketing only serves to illustrate that the above objective technical problem is not a contrived one but can reasonably be assumed to arise. The board concedes that different perspectives could be taken on the invention, for example as a means for parents trying to increase the emotional bonds between their child and its teddy bear, but holds that the technical problem solved by the invention would remain the same.

Main request

[10] The skilled person, in order to solve the above problem by implementing the given communication task, would have to choose a means of communication with the owners. A priori, several options exist, such as telephone, telefax, WWW, or email. All of them were well-established at the priority date so that the skilled person would have made his choice according to circumstances and after weighing the well-known advantages and disadvantages of these communication means against each other. Specifically, the choice of email was obvious at the time.

[10.1] Evidently, for email communication to be possible the email address of an owner must be made available to the information provider. Likewise, it appears to be a matter of necessity that the object of interest – the stuffed animal toy – must be identified to the information provider so that the information can be customized to the object.

[10.2] The skilled person would also have to decide how that information should be made available. Again various alternatives exist, including the ones mentioned above, all of which were equally well-established and thus equally obvious.

[10.3] The board considers that it was commonly known at the priority date that Internet users would register their interest to receive information – such as electronic newsletters – via a web browser. Document D1 reports that by its filing date in June 1999 it was known to use the wireless application protocol WAP to browse the Internet with a mobile phone […]. In the board’s view the desire to access the Internet via a mobile phone was common at the priority date of the present application and that also the use of WAP to achieve it was commonly known at the time. The use of a mobile telephone to register the relevant data would thus be an option that the skilled person would consider as a matter of course.

[10.4] Finally, the skilled person would have to obtain the message text to be sent. It follows directly from the problem that the text should relate to the registered toy and it would be obvious, for instance, to select the appropriate text for a given toy, identified by its ID code, from a list of predefined such texts, thereby “electronically generating a mail text” according to claims 1 and 4 of the main request.

[10.5] In summary, the board concludes that the skilled person would have to make only routine choices – selecting technical means for the user to register the relevant data and for the information provider to obtain and communicate the information of interest – so as to arrive at the subject matter of claims 1 and 4 of the main request which, hence, lacks an inventive step over common knowledge in the art, A 56 EPC 1973.

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T 2402/10 – Seeing Double

When dealing with this appeal against the revocation of the opposed patent, the Board had to deal with the question of double patenting and offers us an overview over the relevant case law.

[8] Although not being a ground for opposition, the [opponent] objected to double patenting, since claim 1 of the patent-in-suit was amended during the opposition/appeal proceedings in such a matter that its scope was fully encompassed by the scope of the claims of the patent EP 0 364 417 B granted from the grandparent application. The subject-matter of claim 1 of the patent-in-suit was not substantially different from the subject-matter of the combination of claims 1, 9 and 14 of EP 0 364 417 B for the contracting state AT, BE, CH, DE, FR, GB, IT, LI, LU, NL, SE or of the combination of claims 1 and 15 for the contracting states ES and GR.

In G 1/05 and G 1/06 [13.4], the Enlarged Board of Appeal accepted that a principle of prohibition of double patenting existed on the basis that an applicant had no legitimate interest in proceedings leading to the grant of a second patent for the same subject-matter. This requirement of “same subject-matter” was followed in the established case law of the technical boards of appeal regarding the question of “double patenting” (see e.g. T 1391/07, [2.5]; T 877/06 [5]; T 1708/06 [6]; T 469/03 [4.2]).

In the present case, claim 1 of the patent-in-suit requires a treatment in a human being and a dose of 0.1 to 30 micrograms of 13,14-dihydro-17-phenyl-18,19,20-trinor-PGF2alpha-isopropyl ester in 10 to 50 microlitres of the composition. These technical features are not required by any claim of EP 0 364 417 B. It follows that due to these technical distinguishing features the subject-matter of claim 1 of the patent-in-suit is not the same as that of claim 14 of EP 0 364 417 B.

Since EP 0 364 417 B and the patent in suit claim different subject-matter, the question of double patenting cannot arise.

[The opponent] nevertheless referred to the headnote of T 307/03 which stipulates that a double patenting objection can also be raised where subject-matter of the granted claim is encompassed by the subject-matter of the claim later put forward.

The Board, however, sees no reason to depart from the mandatory requirement of “same subject-matter” invoked in the decisions G 1/05 and G 1/06 and in the established case law in relation with double patenting to claims on the mere ground that the subject-matter of the claim later put forward is already encompassed in a granted claim.

This argument of the [opponent] must thus be rejected.

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T 1829/10 – Just Wanna Be Heard

In this case the Examining Division (ED) refused an application without oral proceedings (OPs) although the response of the applicant to the first notification included the following paragraph:

which could be translated as follows: “In case there are further fundamental objections regarding patentability, an interview or a hearing is considered appropriate. Minor amendments that are still considered appropriate could also be discussed by phone with the undersigned.”
 
As you might have expected, the Board came to the conclusion the ED should have granted OPs.

*** Translation of the German original ***

[2.1] The question to be answered here is whether the above […] cited final paragraph of the letter of the appellant dated January 27; 2010, contains a request for OPs within the meaning of A 116. The Board is of the opinion that this paragraph deals with three aspects, i.e. an interview, a hearing (Anhörung), and a phone call.

[2.2] According to the established case law of the Boards of appeal of the EPO, a request for an “interview”, i.e. a personal discussion, or for a phone call, is not a request for OPs. If such a discussion (Rücksprache) is proposed or requested by the applicant, it is within the discretion of the Examiner or the ED to grant the request or not to grant it (see also the Guidelines, C-VI 6.2 in their version of April 2010).

[2.3] A request for OPs is something fundamentally different. When OPs are requested by a party to the proceedings, then, pursuant to A 116(1), there have to be OPs before the Office can take a decision. This provision is mandatory and does not allow for any discretion, in contrast to the possibility of a discussion, which is not explicitly mentioned in the EPC.

[2.4] In the present case the applicant used the term “hearing” (“Anhörung”). As correctly explained in the impugned decision […] this expression is equivalent to “OPs” within the meaning of A 116(1). However, in this context the applicant did not explicitly use the expression “request”. It stated that a “hearing was considered appropriate” if there were “further fundamental objections regarding patentability”. However, the Board is of the opinion that when this wording is read in a fair and understanding manner, it can only mean that the applicant wanted to be heard again before the ED took a decision and, therefore, desired, and thus requested, OPs. Whether the term “request” is used or not is irrelevant in this context (see also T 263/91 [2, 3^rd paragraph]). The only thing that matters is the intention of the applicant, which the Board considers to be clear and unambiguous in the present case.

If the ED had had any doubt whatsoever in this respect, it would have had to contact the applicant to clarify whether OPs pursuant to A 116(1) had indeed been requested or not, because this is an inalienable right of parties to proceedings before the EPO (see T 668/89 [3]; T 95/04 [3]). In contrast to a request for a discussion, the expression “appropriate” (sachdienlich) used by the applicant implies, in a request for OPs, that the ED has no discretion not to grant it.

[2.5] Decision T 263/91 cited in the impugned decision to refuse the application is not applicable to the present case because in the case [underlying the decision] the party only reserved the right to request OPs. In other words, the party only expressed that, for the time being, it did not yet file a request for OPs but might want to do so later on (see [2, 3^rd paragraph] of the reasons). The situation to be assessed here rather compares to the situation underlying decision T 283/88 […] where the applicant suggested or proposed OPs, which the competent Board considered to constitute a request for OPs (see [4] of the reasons).

[2.6] Therefore, in the present case the ED was not entitled to take a decision refusing the application without summoning to the requested OPs beforehand. This is a violation of the inalienable right to OPs enshrined in A 116(1). Thus the impugned decision is void and has to be set aside.

[2.7] The right to OPs under A 116(1) is an important and essential part of proceedings before the departments of the EPO. A violation of this right, therefore, always constitutes a substantial procedural violation within the meaning of R 103(1)(a). The ED has taken a decision immediately following the applicant’s response to the (first and only) communication of the ED and, when doing so, has ignored the discernable intention of the applicant or at least has not tried to clarify the latter (cf. T 283/88 [4]). This is a fundamental procedural violation justifying the reimbursement of the appeal fee under R 103(1)(a). Pursuant to Article 11 RPBA, in such a situation the case has to be remitted to the first instance, and this is also what the applicant has explicitly requested. […]

If you are an attorney and if you want to avoid a useless appeal, you better formulate your request for OPs in terms that are unambiguous, even for an Examiner who has a bad day. In my opinion, wording the request as above is inviting trouble.

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T 2133/10 – Law And Order

Both the patent proprietor and the opponent appealed against the maintenance of the opposed patent in amended form.

The patent proprietor, an Italian company, filed the notice of appeal in Italian. The same fax also contained an English translation.

The opponent argued that the appeal of the patent proprietor was inadmissible because the English text had been received at the Office before the Italian text. As a matter of fact, the fax shows that the page containing the notice of appeal in Italian was received at 18:26:21 whereas the Italian version was received at 18:26:37, i.e. 16 seconds later.

The Board won’t have it:

[1.2] The opponent (appellant 1) considered that the requirements of R 6(3) concerning the reduction of the appeal fee were not met, that the paid amount was not correct and that therefore, the appeal lodged by the patentee was to be rejected as inadmissible. He referred to the decision of the Enlarged Board of Appeal (EBA) G 6/91 which states that “the persons referred to in A 14(2) are entitled to a fee reduction if they file the essential item of the first act in filing, examination or appeal proceedings in an official language of the State concerned other than English, French or German, and supply the necessary translation no earlier than simultaneously”. The opponent noted that in the present case, the fax transmission of the English translation of the notice of appeal was completed before that of the original Italian notice of appeal and that therefore the English translation has been supplied earlier rather than together with regard to the Italian text.

R 2 and Article 3 of the Decision of the President date 12 July 2007 concerning the filing of patent applications and other documents by facsimile (Special edition No.3, OJ EPO 2007, A 3) read in conjunction with R 99(3) and R 50 allow for the filing of the notice of appeal by facsimile. As set out in Article 5 of this decision documents filed by facsimile are accorded a single filing date. This is in particular to determine whether time limits, which are calculated in terms of days as smallest time unit, have been met. The implication of a single filing date is that a filing of documents by facsimile constitutes a single filing act, so that a facsimile filing for all intents and purposes can be considered equivalent to a filing by other means allowed under R 2(1). With one exception (a fax transmission extending beyond midnight), all documents received in a single fax transmission are thus considered to have been filed together on the same date and form part of a single filing.

Turning to G 6/91 cited by the appellant-opponent, this decision by the EBA considered the questions concerning inter alia filing requirements for fee reduction under R 6(3) arising in a specific case in which an appeal was filed in the form of a letter in Dutch accompanied by a translation into English, cf. summary, point II. The EBA weighed various considerations of such a filing of original and translation “at the same time” (cf. reasons [7] and [10]), and held that, indeed, a party who wanted to benefit from a fee reduction under R 6(3) must file the translation “no earlier than simultaneously” with the original, reasons [12]. From a contextual reading of these separate parts the Board infers that the terms “at the same time” and “simultaneously” are used synonymously and are meant at least to cover the case at hand, i.e. where original and translation were filed together in a single filing on the same date. Thus, if original and translation are filed together fee reduction under R 6(3) should apply.

In the present case, as is clear from the transmission date recorded at the top and bottom of each page, all of the pages of the facsimile, including the Italian text and its English translation, were received in a single fax transmission on a single date recorded as 2010-10-18. This is also not changed by the fact that the exact time of reception of the individual pages of the fax transmission was also recorded on each page, thus showing a few seconds of delay between the pages. Consequently, both the notice of appeal in Italian and in its English translation were filed together in a single filing act of single filing date. This situation is thus analogous to that underlying G 6/91 but for the means of filing. As it can be inferred from the above decision of the President that filing by facsimile is legally equivalent to filing by any other means, it follows that the present case should therefore also benefit from a fee reduction under R 6(3). The Board adds that a narrower reading of G 1/91 (sic) which would differentiate between the different filing means would be alien to the broad principle of equity underlying that decision.

That the translation is not expressly identified as such in immaterial. Its nature and function are immediately clear from the express mention of R 6(3) and Article 14(3) RRF (sic) and the corresponding 20% fee reduction. Thus, for example the Receiving Section had no problem in establishing that a fee reduction under R 6(3) was sought, and duly applied one.

The Board concludes that the requirements for a fee reduction of R 6(3) were met and that therefore the correct fee has been paid. As otherwise all requirements of A 108 and R 99 have been met, the Board finds the proprietor’s appeal to be admissible.

Nevertheless, the Board notes that the patentee could have made things clearer by identifying the English version of the notice of appeal as being a translation.

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NB: This decision has been presented on Le blog du droit européen des brevets (here).

T 1265/10 – What They Really Want

This is an appeal against the revocation of the opposed patent. it was limited to the issue of whether the opposition had been validly filed.

The notice of opposition had been filed two days prior to the expiry of the opposition period, on 1 December 2004. The notice was accompanied by a number of documents, and on EPO Form 2300 (form for filing an opposition used by the opponent), section X (“payment of the opposition fee is made”) was crossed to indicate that a voucher for payment of fees and costs (EPO Form 1010) was enclosed. However, no payment voucher was found to be enclosed with the notice of opposition. The notice of opposition made no further mention of the payment of the opposition fee. The opponent’s representative who filed the opposition did, however, maintain a deposit account with the EPO, and had regularly used it for payments of fees.

With a communication dated 15 April 2005, the opponent was informed that the opposition fee had not been paid. As a response thereto, the opponent on 26 April 2005 sent a copy of EPO Form 1010 with the patent number at issue, indicating payment of the opposition fee, and bearing the date of 1 December 2004. As a consequence, in a “brief communication” of 29 May 2006, the formalities officer of the Opposition Division (OD) expressed the opinion that the opposition fee was duly paid and the opposition filed within the opposition period.

The patent proprietor pointed out that the opposition had not been validly filed.

The Board disagreed:

[7] According to A 99(1), an opposition is only validly filed once the opposition fee has been paid. In other words, there is no opposition unless the corresponding fee has been paid within the time limit for filing an opposition.

[8] One recognised way of paying the opposition fee is payment from a deposit account with the EPO, see the “Arrangements for deposit accounts (ADA)” in the version published in Supplement to Official Journal No. 2/2002, 3-37, subsequently referred to as “Arrangements”. A deposit account set up for the purposes of fee payment to the EPO is an account the EPO can withdraw funds from when properly instructed, or automatically. As the automatic debiting procedure is not available for the payment of opposition fees (Point 4. of the Arrangements for automatic debiting procedure, Official Journal No. 2/2002, 11), the ordinary rules of the Arrangements apply.

[8.1] The Arrangements require payment from a deposit account via a debit order. According to point 6.2, such a debit order must be made in writing, but is otherwise not subject to any formalities, in particular use of Debit Order Form 1010 is not required. For a valid debit order, point 6.3 of the Arrangements requires “the particulars necessary to identify the purpose of the payment and the number of the account which is to be debited.” The Arrangements do not indicate what should happen in case one of the formal requirements is not complied with.

[8.2] In the case at issue, section X (“Payment of the opposition fee is made”) was crossed to indicate that a voucher for payment of fees and costs (EPO Form 1010) was enclosed. The notice of opposition itself did not mention any debit account number. The fact that box X of the opposition form was crossed is first of all a statement of fact, namely that the voucher for payment of fees and costs was enclosed. As such, this was incorrect - no such voucher has been found. But in addition to a statement of fact, it is also a declaration of intent, namely of the intention to pay the opposition fee. Declarations of intent, as is generally acknowledged, should be interpreted in order to ascertain the true intention of the declaring party rather than adhering to the literal meaning of the declaration. In this respect, both parties have pointed to a number of decisions by the Boards of Appeal that relate to such intentions to pay fees in connection with the debit order system.

[9] In agreement with the [patent proprietor], and in conformity with the jurisprudence of the Boards of Appeal, it is necessary for a debit order to be unambiguously recognisable and show a clear and unambiguous intention to make a particular payment, cases T 170/83, T 152/82 and T 152/85.

[10] The above-mentioned decision T 170/83 [6] provides an appropriate starting point in this respect. In its English translation, this paragraph reads as follows:

“In the case of a debit account, the problem is not the existence or the timely deposit of money as such, but the timely authorisation of the EPO to dispose of such money for a specific purpose. By opening a deposit account, a special relationship between the EPO and the account holder is created. Accordingly, a necessary authorisation to dispose of such money can also be inferred from evaluating all the circumstances despite existing formal defects. Such an authorisation to be derived from the circumstances first of all requires that the authorising person (account holder) is known and clearly identifiable, and that certain fees that are due to the EPO for a known procedure are meant to be paid by the withdrawal from such account (and not in any other way). Both the account holder and his concrete intention must therefore be beyond doubt. In addition thereto, the circumstances must be such that the EPO can and must regard itself as authorised to effect withdrawal without further clarifications.”

In case T 806/99, which the board regards as of particular relevance, it was held sufficient for an unequivocal intention to pay the opposition fee by making use of the debit order system that in the Opposition Form 1200 box X had been crossed, even if no corresponding debit order was accompanied by the opposition brief that had been filed on the last day of the opposition period. The board in point [4] of the reasons (in English translation) held as follows:

“In the case at issue, the representative of the opponent in opposition form (EPO Form 2300) filed in due time, crossed the box in section X of the form that states “Payment of the opposition fee is made as indicated by the enclosed voucher for payment of fees and costs (EPO Form 1010).” This declaration satisfies at least the minimum formal requirements (written form, signature, indication as to the reasons for payment). The office also knows of the existence and the number of the deposit account of the representative. However, in view of the facts ascertained by the first instance, EPO Form 1010 was not filed together with the opposition and it is therefore necessary to examine whether the intention of the representative was clearly within the ambit of this declaration. In this respect, it is not sufficient to merely cling to the form of the declaration, but, on the contrary, according to the case law cited above, to equally consider the circumstances within which such declaration was made and in light of the circumstances known to the office at the time the declaration was received.” (points [4] and [4.1] of the reasons).

The board subsequently considered the fact that the representative regularly paid via the debit account, that other forms of payment such as payment per cheque could be excluded due to the fact that point IX of the opposition form did not list that a cheque had been enclosed, that by the rather detailed opposition statement it could be excluded that the opposition was not meant seriously, and that thereby it could be clearly established that the representative had intended to pay the opposition fee by the EPO debiting his account for the correct amount.

[11] The Board in the case at issue is faced with facts that are almost identical to those on which the decision T 806/99 was based, with the difference that the opposition was not filed on the last possible day of the opposition period, but two days prior to the expiry of such period. Nothing turns on this difference, however.

[12] A number of decisions cited by the [patent proprietor] concern issues of insufficient payment, or of the Office’s obligation of notification in case of missing documents. In particular:

• decision T 79/01 concerns a case where an appeal was deemed inadmissible due to the fact that less than half of the appeal fee had been paid. The case at issue, however, concerns the question whether or not there was a clear and unambiguous intention to pay the appeal fee.
• decision T 161/96 concerns the insufficient payment of an opposition fee. Here, the board held that an insufficient payment was entirely within the responsibility of the opponent, and the Office had no obligation to inform the opponent of such insufficient payment where the opposition was filed just at the end of the opposition period. Neither insufficient payment of the opposition fee, nor the Office’s obligations of notification are of any relevance in the case at issue.
• finally, decision J 13/91 also deals with the Office’s obligation of notification in cases of insufficient payment. Again, the case at issue does not give rise to any discussion on insufficient payment, but on the interpretation of the opponents intent to pay.

For the above reasons, the Board sees no discrepancy in case law on the issue of determining whether or not a fee has been paid in the context of making use of a deposit account, and consequently a referral to the Enlarged Board would not be justified.

[13] The Board agrees with the [patent proprietor] that legal certainty is of high relevance when it comes to filing an opposition. It is not least for this reason that case law has consistently required the clear and unambiguous intention of authorising the Office to withdraw money from a deposit account in order to effect payment. Determining such intention requires proper considerations of all circumstances of the specific case. The relevant question to be asked is: “Did the opponent give the Office proper authorisation to withdraw the opposition fee from his deposit account?” The [patent proprietor] submits that the opponent did not. A mere cross in section X of Form 2300 is a far cry from a full authorisation to withdraw money from a deposit account. After all, section X refers to Form 1010, and this form allows for three modes of payment: By cheque, by bank transfer, or by debit from a deposit account. Without Form 1010, how could the Office know which form of payment the opponent had chosen? How could it be certain that it was the third alternative, namely, debit from a deposit account? These are the same questions the Board was faced with in decision T 806/99, and the answers are the same. There was no cheque enclosed, for which reason intention to pay by cheque could be excluded, and the opponent’s representative has regularly used payment via debit order, at least in appeal proceedings before this Board. The Board is aware that such interpretation favours representatives appearing regularly before the Office. But it appears legitimate to the Board to infer an intention, and thus an authorisation, from previous behaviour.

[14] The [patent proprietor] argued that a situation could be conceived where an opponent wanted to file an opposition but deliberately refrained from paying the opposition fee. This would mean that the opponent in such case could not turn around and ask the Office for the opposition fee to be reimbursed had the Office on the basis of the notice of opposition withdrawn the opposition fee from the deposit account. In light of the detailed notice of opposition, the existing deposit account and the intention to file the debit order Form 1010, the Board would find a refund of the opposition fee in such case highly inappropriate, and does not see, either, why an opponent who in performing the above acts only wanted to file a “mock” opposition should be protected by way of having the opposition fee reimbursed.

[15] The Board would also like to highlight that the issue is not whether the opponent intended to pay. An intention to pay is certainly not enough in order to actually effect payment. For example, it would not have been enough to indicate in the notice of opposition that payment would be made by cheque, and no corresponding cheque had been enclosed. But the statement “we want to pay” is different in its legal significance from the statement “we want to authorise the EPO to withdraw the fees for a determined purpose from our account” in that the intention to authorise already allows the Office to act on such authorisation and carry out such intent where the EPO under the deposit account system already holds such money in trust.

[16] In the case at issue, the Board therefore recognises the clear intention of the opponent to settle the opposition fee by authorising the Office to withdraw the opposition fee for a specific case from an identifiable deposit account. This is sufficient for payment of the opposition fee. The opposition has therefore been validly filed, and the appeal that is limited to the issue of whether a valid opposition has been filed, must fail accordingly. As the OD was correct in its conclusion that the opposition fee had been validly paid, no procedural violation has occurred by opening opposition procedures. Therefore, also the request for reimbursement of the appeal fee must be dismissed.

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