T 712/10 – Diapers, Dots, And Dreadful Draps

The decision on this appeal against the revocation of the opposed patent by the Opposition Division contains two interesting passages.

Claim 1 of the main request before the Board read:

A disposable absorbent article in the form of a diaper having an absorbent structure comprising an absorbent core (3) which is coated with absorbent sheets (3A, 3B) to thereby form the absorbent structure and disposed between a liquid pervious sheet (1) and a liquid impervious sheet (2),

wherein the absorbent sheets (3A, 3B), laterally extend beyond the side edges of the absorbent core (3) to thereby form extended peripheral side portions in the opposite leg portions of the diaper wherein the liquid impervious sheet (2) has the shape of a rectangle with a width being larger than that of the absorbent structure and a back sheet (30), which has the shape of an hourglass, is provided so as to cover externally the liquid impervious sheet (2),

wherein the liquid pervious sheet (1) has the shape of rectangle with a width being larger than that of the absorbent structure so as to laterally extend beyond the side edges of the absorbent structure with a short distance, and is fixed to the liquid impervious sheet (2),

and at least one standing cuff (B) comprising a double standing sheet which has a free portion thereof standing toward the wearer’s leg by means of a stretching force of stretching members (5) in a used condition,

wherein an internal side of the double standing sheet initiates at the proximal edge fixed to the side edge of the liquid pervious sheet (1) and is fixed to the liquid impervious sheet (2) along its extended peripheral side portion in the laterally outboard portion with respect to the proximal edge and the proximal edge where the internal side of the double standing sheet is fixed to the liquid pervious sheet 1, defines a base line from which each standing cuff B stands such that said free portion has a base line for standing in a side flap being outboard with respect to the side edge of said absorbent core,

wherein the free portion includes a standing portion (10) which stands from the base line toward the longitudinal centerline of said article and a contacting portion (20) which folds back halfway outwardly;

wherein said stretching members (5) extend in said contacting portion (20), in the vicinity of the fold and in said standing portion (10), respectively;

and said standing cuff (B) stands toward said wearer’s leg by means of a stretching force of said stretching members (5) in a used condition, while the extended peripheral side portion of the absorbent sheets (3A, 3B) and the absorbent core (3) are deformed and lifted such that said side flap between said side edge of said absorbent core (3) and said base line for standing is deformed and a deep pocket space is formed in the diaper.

The Board found this claim not to comply with A 123(2):

[2.1] The feature of claim 1

“wherein said stretching members (5) extend in said contacting portion (20), in the vicinity of the fold and in said standing portion (10), respectively;” (specified as “feature (iii)” in the following text)

results, in particular with regard to the wording “in the vicinity of the fold”, in subject-matter which does not meet the requirement of A 123(2).

[2.2] Objection had been made already to this feature in the decision under appeal (point 2.1.4.3) as contravening the requirement of A 123(2).

[2.3] The appellant was of the view that although there was no literal disclosure of such wording, the drawings shown in Figures 1 to 3, which refer to the first and second embodiments, clearly disclosed such feature and claim 1 defined the essential features of these embodiments. In particular, it considered the black dot in the double standing sheet (in Figure 2) close to the position separating the standing portion (10) from the surface contacting portion (20) as representing the stretching member which extended in the vicinity of the fold. Additionally, paragraphs [0068] and [0076] (A-publication) should be interpreted in such a way that they confirmed this disclosure.

[2.4] When scrutinizing the disclosure in the above cited Figures and paragraphs, there is no clear and unambiguous disclosure with regard to a stretching member “in the vicinity of the fold” as claimed, for the reasons given infra.

[2.4.1] The wording of paragraph [0068] (A-publication) does not refer to a stretching member in the vicinity of the fold but to a plurality of stretching members as extending in the vicinity of the side edge of the surface-contacting portion 20 and is worded as follows:

“In the more preferable aspect, the stretching members 5, 5 ... extend in the vicinity of the base line for the standing portion 10, in the vicinity of the distal edge of the double standing sheet, and in the vicinity of the side edge of the surface-contacting portion 20. In addition, a plurality of stretching members 5, 5 ... preferably extend in the vicinity of the side edge of the surface-contacting portion 20 as shown. Additionally, in order to improve the standing ability of the standing portion 10, a plurality of stretching members 5, 5... may further extend on the standing portion 10. In the Figure are shown six stretching members in total.”

[2.4.2] When considering Figure 2 for the presence of such stretching members, the surface-contacting portion 20 is shown as being provided with two stretching members, one of which is positioned in the (outer or distal) side edge of the surface-contacting portion, which edge represents the upper end of the free portion when standing; and the other stretching member is positioned slightly inboard of this edge. Both stretching members are identified via the reference numeral 5. No further stretching member is shown as being located on (or within) the surface-contacting portion. 

[2.4.3] In Figure 2 there are two further stretching members identified via the reference numeral 5. However, these stretching members are within the standing portion 10 of the free portion and are located at the base end and in the middle between the base end and the distal end of the standing portion, respectively. Hence, these stretching members cannot represent stretching members extending in the vicinity of the side edge of the surface-contacting portion such as set out in paragraph [0068].

[2.4.4] Additionally, there are two further numerically unreferenced black dots within the standing portion 10, one of which is close to the edge which joins the surface contacting portion 20 to the standing portion 10. However, on the one hand this black dot cannot be clearly and unambiguously identified as a stretching member because it is not indicated with the corresponding reference number, and on the other hand, it is not clear whether it is this fold which is to be considered. There are two folds possible in the double-layered standing sheet: one fold concerns the folding in relation to the surface-contacting portion, the other fold concerns the folding of the fixed portion in relation to the free portion when fitting the article. Since there is one stretching member 5 exactly at this latter position for folding/upstanding of the cuff – at the base end –, no clear and unambiguous disclosure is present with regard to which fold is concerned.

[2.4.5] The further reference to the disclosure in paragraph [0076] is also not unambiguous. This paragraph refers to the second embodiment, shown in Figure 4, which is said to differ from the first embodiment in that the stretching member is present in the vicinity of the edge where the surface-contacting portion (20) folds back halfway. Hence, this reference cannot clarify the description provided in paragraph [0068] either - on the contrary, it highlights that in the first embodiment no such stretching member should be present at that location. It may be noted also that the claim defines “stretching members” in the vicinity of the fold, whereas, even when considering Figure 2, a single stretching member (if this is the “black dot” mentioned earlier) is present on the end part of the standing portion 10 close to the joining fold.

[2.5] Accordingly, the main request is not allowable under A 123(2) at least because there is no clear and unambiguous disclosure in the application as filed for the feature “wherein said stretching members (5) extend in said contacting portion (20), in the vicinity of the fold and in said standing portion (10), respectively;” in combination with the further features in claim 1 concerning the claimed embodiment.

[2.6] Moreover, the features of paragraphs [0062] and [0066] of the application as filed (A-publication) which are also disclosed in combination with the embodiment which the appellant claims are omitted. These features concern in part the standing cuff which is made double by folding the inside of the standing sheet inwardly so as to be shorter than the outside and the fixation of the standing cuff in the front and back ends of the diaper body. These features are also related in particular to the functions of “volume” and “sealing” which were emphasized by the appellant as being essential for the invention. Accordingly, these features are disclosed in a functional and structural relation to the claimed embodiment whereby, via their omission, the requirement of A 123(2) is not met since an unallowable intermediate generalisation of the content of the application as filed has occurred. Hence, the main request is not allowable at least for the foregoing reasons.

The appellant also requested the Board to refer the following questions to the Enlarged Board of appeal (EBA):

1. Is the drastic consequence of G 1/93 (the so-called A 123(2)/123(3) trap) still valid, although no contracting state of the EPC and no other country in the world followed that approach?

2. If a European patent as granted contains subject-matter which extends beyond the content of the application as filed and also limits the scope of protection conferred by the claims, is it possible during the opposition proceedings to maintain the patent in view of paragraphs 2 and 3 of A 123 while no rights can be derived from features that relate to said subject matter in the sense that said features must not be considered to delimit the subject matter over prior art but restrict the scope?

3. Is there a difference in answering questions 1 and 2, if an amendment which leads to the drastic consequence that a feature cannot be deleted because of A 123(3) but extends beyond application as filed has been carried out during the international phase of a PCT application which then entered the regional phase in Europe or if that amendment has been carried out during the granting proceedings before the EPO?

4. If questions 1 and 2 are answered in the negative, does there exist another possibility of escaping the so-called A 123(2)/123(3) EPC trap?

The Board refused to refer the questions to the EBA:

[8.1] The conditions in A 112(1) for referring a question to the EBA are either that a reference is necessary to ensure a uniform application of the law or that a point of law of fundamental importance arises. Neither of these questions is met in regard to the questions […] which the appellant requested to have referred.

[8.2] Concerning the alleged non-uniform application of law, this requirement in general refers to non-uniform application of the law by the Boards of Appeal: the EBA does not have the power to ensure uniform application of the law between the Boards of Appeal and national courts. A lack of uniformity between the law as applied by the Boards of Appeal and national courts could in theory bring to the fore a point of law of fundamental importance, something which is considered in the next paragraph. As to non-uniform application of the law by the Boards of Appeal, the appellant did not in fact suggest that the principles laid down in G 1/93 have not been consistently applied by the Boards of Appeal.

[8.3] As to whether a point of law of fundamental importance arises, no such issue is apparent. The relevant issues have already been decided by the EBA in G 1/93 and it has not been shown that any legal or technical developments have occurred in the interim making it desirable in the public interest to have the issues reviewed again by the EBA: T 82/93. The appellant did not provide evidence that the contracting states of the EPO had not followed the principles of G 1/93 concerning the relation between A 123(2) and (3). The separate footnote solution applied in Germany does not support a trend in Europe but rather represents an isolated approach which in fact was held not allowable in G 1/93.

[8.4] By question 2 it appears to the Board that the appellant asks a question which is in fact not related to the facts of the present case. The point is that the omitted features do make a technical contribution to the claimed subject matter since they concern the structures which give rise to the specific configuration of the article […]. The question is therefore not relevant because its premise (“while no rights can be derived from features that relate to said subject matter in the sense that said features must not be considered to delimit the subject matter over prior art but restrict the scope”) does not apply.

[8.5] As to question 3, irrespective of when the amendments leading to such a situation were made, the requirements of A 123(2)/123(3) have to be met as set out in G 1/93. The issue of the amendments being made during the international phase of the application does therefore not alter the applicable case law. It is also noted that when entering the European regional phase, the applicant was not required to proceed with any amendments it had made in the international phase.

[8.6] Thus, when addressing the four questions posed by the appellant, there is no evidence for the allegation in question 1 that no contracting state of the EPC and no other country follows the approach of the EPC. The subject-matter of question 2 does not arise in the current case. Question 3 can be answered by the present Board to the effect that an application is not restricted to an amendment made at the international phase. Finally, question 4 has already been answered in item 2 of decision G 1/93.

[8.7] The request for referral of a question to the EBA is thus refused.

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T 196/10 – From Paris With Love

This is an appeal by the patent proprietor against the revocation of its patent by the Opposition Division.

In its opposition, opponent 1 had inter alia questioned the validity of the patent because it had been filed as a divisional application at the French patent office (INPI), although A 76 required divisional applications to be filed at the EPO.

The OD had endorsed this approach and had considered that the divisional did not benefit of the filing date of the parent application and, as a consequence, was lacking novelty over the parent application.

The Board disagreed:

*** Translation of the French original ***

Status of the application on which the patent-in-suit is based

Divisional application and place of filing

[1.1] A 75 EPC 1973, which applies in the present case, reads:

A European patent application may be filed:

(a) at the EPO at Munich, or its branch at The Hague, or

(b) if the law of the Contracting State so permits, at the central industrial property office or other competent authority of that State. An application filed in this way shall have the same effect as if it had been filed on the same date at the EPO.

(2) …

(3) No Contracting State may provide for or allow the filing of European divisional applications with an authority referred to in paragraph (1)(b).

Pursuant to A 75(3) EPC 1973 divisional applications must be filed at the EPO. The Contracting States are not entitled to allow or require divisional applications to be filed with their national authorities. If a divisional application is sent to a national authority, the latter does not have to transmit it to the EPO. However, if it does, in application of the principles of good cooperation between administrative authorities, then this application shall have as date of receipt the date on which it reaches the EPO. In other words, it is only when the EPO recieves the documents that are to constitute a divisional application that they are treated as a filing of a divisional application. Incidentally, this finding is laid down in the Guidelines for Examination in the EPO, part A, chapter IV, point 1.3.1.

The travaux préparatoires for the EPC 1973 show that it was only in the course of the intergovernmental conference for establishing a European patent system in November 1971 that the decision was taken to expressly provide in the text of the EPC that divisional applications were to be filed at the EPO only and to exclude, as a consequence, filings with the national authorities (“The group, after deliberation, has chosen a solution consisting in providing that divisional applications may only be filed at the EPO and that no state may provide for or allow such filings with the central industrial property office.”) Considerations related to the examination of the parent application with respect to national provisions regarding the maintenance of secrecy (mise au secret), the transmission of the parent application and the divisional application to the EPO, and the possible legal effect of a divisional being filed with a national authority (the application and its parent application would have been deemed to be withdrawn in case they were not transmitted, A 77(5) EPC 1973) led the legislator to prohibit the filing of divisional applications with the national authorities, for the sake of clarity. See document BR/144/71 dated December 16, 1971, point 18.

[1.2] In the present case, the patent application on which the patent was based has been filed, as shown by form 1001, at the INPI on March 21, 2000 (stamp on form 1001.6), and has been transmitted by the INPI to the EPO, where it was received on March 30, 2000 (stamp on box 3 of form 1000.1). The fact that the box is ticked in section 35 of form 1001 clearly indicates that the the European patent application is a divisional application; the number indicated in this section (n° 96 401 179.5) is the number of the parent application. The priority claimed in section 25 of form 1001 is the priority of the parent application. The Contracting States designated in section 32 of form 1001 are the same as those designated by the parent application. Moreover, the applicant is the same (see sections 7 to 9 of form 1001).

[1.3] Considering all these pieces of information the only objective conclusion possible is that the patent application on which the patent-in-suit is based is a divisional application which has been erroneously filed with a national authority – first mistake – and to which that authority, here the INPI, has allocated a number [as if it was] a patent application filed under A 75(1)(b) EPC 1973 […] – second mistake –, which allocation has not been expressly corrected or nullified by means of a communication of the Receiving Section (RS) – third mistake.

[1.4] However, it is clear from the file that the RS, which has exclusive competence to allocate a filing date (cf. J 18/86), has, upon receipt of the European patent application, on March 30, 2000, allocated the filing date of the earlier application, i.e. June 3, 1996, to it and has indicated on the first sheet of the application as published (A1 document) that the application was a divisional application.

[1.5] The Board of appeal agrees with the assertion of […] opponent 1 that the date (“21-03-2000”) indicated as filing date under the heading “Remarks” of the publication EP 1 026 438 A1 is incorrect – fourth mistake. The correct date was March 30, 2000, i.e. the date on which the divisional application was received at the EPO. However, the Board is of the opinion that this is nothing more than an erroneous date. Howally [NB: the French has “toutefin”, which appears to be a contraction of “toutefois” and “enfin”, which might be best rendered by a contraction of “however” and “finally”], it is clear from the cover sheet of the application as published that the RS has treated this application as a divisional application.

Divisional application and pending earlier application – R 25 EPC 1973

[1.6] For a divisional application to be treated as such it is necessary for it to have been filed at a moment when the earlier application was still pending. The present situation is governed by R 25 EPC 1973, which reads:

“R 25 EPC 1973   Provisions for European divisional applications

(1) The applicant may file a divisional application relating to any pending earlier European patent application.”

The communication pursuant to R 51(4) EPC 1973 for the earlier application n° 96 401 179.5 is dated March 30, 2001; the mention of the grant has been published on October 17, 2001. The transmission of the documents by the INPI has shifted the date of receipt at the EPO from March 21, 2000 (date of receipt at the INPI, stamp on form 1001.6) to March 30, 2000. Thus the earlier application was still pending on March 30, 2000, when the divisional application was received at the EPO.

The Board notes that this point is not contested by […] opponent 1 […].

[1.7] Consequently, the Board can only conclude, as did the RS, that the present application satisfies the requirements of A 76(1), first sentence, EPC 1973, together with R 25(1) EPC 1973. Thus the patent application on which the patent-in-suit is based is a divisional application.

It is deemed to have been filed on the date of filing of the earlier application and has the benefit of the right to priority in respect of the subject-matter that does not extend beyond the content of the earlier application as filed (A 76(1), second sentence, EPC 1973).

As the patent is deemed to have been filed on the date of filing of the earlier application, that application (document D14, EP-A-0 747 796) does not form part of the state of the art for the patent-in-suit.

In view of the above the decision of the OD has to be set aside.

[1.8] Incidentally, the Board wishes to emphasise that an application that has been filed as a divisional application can be treated as such or not. If it is not treated as such, there cannot be grant proceedings. The legislator has not provided the possibility of a posteriori allocating the date of receipt of the divisional application as date of filing of a new application, cf. G 1/05 [11.1] and T 600/08 [2.3]. Even if the RS, when examining the application in view of formal requirements, or even the Examining Division, when carrying out the substantial examination, had erroneously treated the application under consideration as a divisional application and a patent had been granted, the OD is only competent for examining the validity (bien-fondé) of the grant of the European patent within the very strict framework of the grounds for opposition a restrictive list of which is provided by A 100 EPC 1973.  

Reimbursement of the appeal fee – R 67 EPC 1973 (applicable here)

The Board of appeal is of the opinion that the decision issued by the OD is insufficiently reasoned and, therefore, does not satisfy the requirements of R 68(2) EPC 1973, which applies in the present case. The OD only cited some applicable legal provisions without taking account of all the objective facts of the present case. For instance, it has not considered the possible error on behalf of the applicant when it filed the patent application with the national authority, the context of the transmission by the INPI of the patent application under consideration as divisional application, the clear and unambiguous indications of all of the elements of form 1001 and in particular of section 35 concerning the explicit reference to the earlier application. A sufficiently reasoned decision taking account of all the facts of the case would have allowed the appellant and the Board to understand why the OD had decided not to treat the application under consideration as a divisional application. The absence of sufficient reasons as required by R 68(2) EPC 1973 constitutes a substantial procedural violation justifying – the other requirements of R 67 EPC 1973, which is applicable here, being fulfilled – that the appeal fee be reimbursed, the impugned decision set aside and the case remitted to the first instance (A 111(1) EPC 1973).

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T 395/12 – Simply Wrong

This is an examination appeal.

The statement of grounds of appeal was rather minimalist with regard to the impugned decision of the Examining Division (ED):

The following pages of the statement of grounds of appeal essentially reproduced a letter dated June 15, 2007, which had been filed during the examination proceedings.

The Board found this appeal to be inadmissible:

[1.1] In the present case, the applicant’s only statement that directly addresses the decision under appeal was that the ED was “wrong” […]. There is no explanation why it should have been wrong, though.

[1.2] This as such is not contested by the appellant. Yet the appellant invites the board to look at the grounds of appeal as a document in its own right, without a comparison with statements previously made in examination. Both the nature of the appeal proceedings and previous case law speak against such an approach. Decisions T 213/85 and T 95/10 clarify that the appeal procedure is not a mere continuation of the examination procedure (in accordance with decisions G 10/91, G 9/92 and G 4/93, but separate therefrom. Where the applicant in the grounds of appeal repeats its arguments set out during the examination phase without taking into account the decision under appeal, it mistakes the function of the boards of appeal, as the boards of appeal are not a second go of the examination procedure, but are meant to review decisions made by the EDs. Such a review is carried out based on the objections raised against the decision in the grounds of appeal. The grounds of appeal must therefore by definition relate to the reasons on which the decision under appeal is based and cannot be looked at in isolation from the appealed decision and the procedure leading to such decision. According to the decision T 1045/02 [1], “grounds sufficient to make an appeal admissible must therefore at least implicitly deal with the fundamental reasons in the decision under appeal and must explain in an objective manner why the decision under appeal is considered wrong.” (translation by the board).

[1.3] As a fallback position, the appellant has argued that the case at issue cannot be likened to cases where the grounds of appeal merely made reference to statements presented in earlier phases of the procedure. It is true that the inadmissibility of an appeal in decisions such as T 220/83 and T 1045/02 was also based on the fact that a mere reference was made to previous statements. The grounds of appeal in this case do not merely make reference to the letter of 15 June 2007, but cite this letter almost in its entirety. Rather than “grounds by reference”, one could call this “grounds by cut-and-paste”, and the board fails to see how this mechanical exercise adds more to the case than a phrase such as “reference is made to the letter of 15 June 2007 in its entirety” would have done. It has not been argued that the cited passages represent a creative selection that would give these statements a new meaning and could thereby be regarded as a response to the decision under appeal. As far as the arguments on A 56 are concerned, there is an almost literal identity between the grounds of appeal and the letter of 15 June 2007. Decision T 65/96 does not help the appellant’s position, because in addition to the reference to previous statements, three specific points made in the decision under appeal were contested.

[1.4] A further argument advanced by the appellant rests upon a passage in the decision T 644/97 [1] according to which an appellant cannot be compelled to come up with new arguments (“Indeed, a requirement that new arguments must be submitted to render an appeal admissible would imply that the appealed decision, as issued, had necessarily been correct”). In this decision, the board based the admissibility of the appeal on a number of reasons. Apart from the one mentioned above, the admissibility was for the first time contested in oral proceedings, and “a relevant objection [had] already [been] substantiated in the Statement of Grounds of Appeal” […]. Apart from that, the fact that the appellant is not required to come up with new arguments does not mean that the decision under appeal should not be addressed at all.

[1.5] Decision T 934/02 [2] found an appeal to be sufficiently substantiated even in the absence of arguments dealing with the contested decision if two criteria were met:

“(i) The subject of the proceedings has changed e.g. due to the filing of a new set of amended claims together with the statement of grounds, and

(ii) The reasons for the decision are no longer relevant in view of the change in the subject of the proceedings, (cf. in particular J xx/87 [1.4] and T 105/87).”

This rather broad statement is qualified in two further decisions. According to decision T 1045/02, merely filing new claims makes the appeal admissible only in exceptional cases, and according to decision T 1276/05, new claims filed in lieu of any other grounds must be accompanied by an explanation why these requests overcome the objections raised in the decision under appeal, unless this is obvious.

In the present case, six auxiliary requests with new claims have been filed with the grounds of appeal. According to the appellant, this was sufficient to change the case and make the appeal admissible.

[1.6] All six auxiliary requests are combinations of independent and dependent claims, and all these combinations were addressed in the appealed decision and held to lack inventive step. Thus, the decision under appeal still remains relevant for these auxiliary requests. In addition, while the appellant has indicated the basis for the new auxiliary requests, there is no explanation why the ED was wrong in considering these combinations not inventive. The appeal thus does not become admissible by the filing of the auxiliary requests.

[1.7] Finally, the appeal must also be considered inadmissible because the grounds fail to deal with all the reasons the ED has advanced for refusing the application. According to the decisions T 213/85 [4] and T 1045/02, the grounds of appeal must deal with all those reasons on which the decision under appeal is based:

“According to the Board, the minimum requirements for an admissible appeal have not been met if only one of several reasons for refusal are addressed ...” (T 1045/02 [4]; translation by the board).

This position is consistent with the requirement of Article 12(2) RPBA according to which

“The statement of grounds of appeal and the reply shall contain a party’s complete case”.

In the case at issue, the summons of 1 June 2011 which served as the reasoning for the decision according to the state of the file, raised new objections with respect to A 84 for the newly added passages in claim 1 […]. Since these objections were not pertinent and therefore not raised for the previous versions of the claim, the letter of 15 June 2007 and the grounds of appeal that are an almost verbatim copy of this letter do not deal with this objection. As the decision under appeal held that claims 1 and 10 were not clear, A 84 must be considered as one of the reasons the refusal of the application is based upon. Already the failure to address this ground of refusal makes the appeal insufficiently reasoned and inadmissible.

[1.8] Summarising, the grounds of appeal consist of an almost verbatim copy of the appellant’s letter of 15 June 2007 that predates the summons and cannot take into account the division’s subsequent arguments and objections to the amended claims, be it for grounds that have already been raised (lack of inventive step), be it for grounds that became relevant only for the amended claims (lack of clarity). Nor can the above letter furnish arguments to the ED’s comments regarding the amended claims filed with that letter. The auxiliary requests filed with the grounds of appeal are combinations of dependent and independent claims, all of which were addressed in the decision under appeal and can therefore not be considered to be a change of case vis-à-vis the decision under appeal. The appeal is therefore insufficiently reasoned and does not comply with the requirements of A 108. It must therefore be dismissed as inadmissible.

So make sure your statement of grounds of appeal contains at least a reasoned statement or two why the impugned decision was wrong.

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T 2254/11 – Insufficient Funds

Can a wannabe-opponent who did not pay the opposition fee in due time, because of its failure to pay the administrative fee under Article 6 ADA in due time, be re-established in the time limit for paying the fee? That is the question the Board had to answer in the present case.

The problem arose because the opposition fee was to be paid from the deposit account of the ‘opponent’, but the account was not sufficiently funded (similarities to a recent D2 paper are merely fortuitous).

The debit order (705 €) arrived on November 9, 2010, one day before the end of the 9-month time limit for filing an opposition. On November 16 the EPO invited the opponent to replenish its account and to file a debit order for the corresponding administrative fee (211.5 €). The opponent omitted to pay this fee, which triggered a notification of loss or rights under R 112(1). The opponent objected to this finding (invoking Article 7 RRF) and filed auxiliary requests for further processing and for re-establishment (why choose when there are so many wonderful remedies, let the EPO pick whatever they like!).

The Opposition Division (OD) confirmed the loss of rights, explained that further processing was not available and dismissed the request for re-establishment.

The opponent then filed an appeal.

When the Board expressed its provisional opinion that the request could not be granted, the appellant pointed out that all three requirements established by the EBA in G 1/86 were fulfilled: (1) when A 122 was drafted, there were no deposit accounts and the corresponding provisions did not exist yet; (2) the patent proprietor had been informed that an opposition had been filed; (3) the strict standards that apply to a missing statement of grounds of appeal should not be applied to the payment of a penalty (Säumnisgebühr).

Here is what the Board had to say:

*** Translation of the German original ***

[3] Even the appellant admits that the possibility for an opponent to request re-establishment in view of an opposition fee that has been paid after the expiration of the time limit cannot be derived from A 122. However, it refers to decision G 1/86 where the Enlarged Board (EBA) has provided a broad interpretation of the wording of A 122 [allowing] an opponent who has missed the time for filing the statement of grounds of appeal [to request re-establishment] (cf. the communication of the EPO in OJ EPO 2003, 419). Having considered the history and the purpose of the provision, the EBA has come to the conclusion that re-establishment could be envisaged when the time limit was not a time limit for making proceedings pending (Frist zur Anhängigmachung) but for pursuing them (time limit for filing the statement of grounds of appeal).

[4] The case G 1/86 to which the appellant has referred concerns the possibility of re-establishment into the time limit for filing the statement of grounds of appeal in inter partes proceedings before the Board of appeal, which are similar to court proceedings. Based on the principle of equal treatment that applies in this case, G 1/86 had decided that an interpretation of A 122 contra legem was necessary. Decision T 702/89 has declined to extend these principles to the time limit for filing an opposition, for the following reasons:

“[3] Concerning the request for re-establishment of rights

[3.1] The requirements relating to admissibility of a request under A 122 filed by the opponent were set out in part in above-mentioned decision G 1/86 of the EBA. The Board shares the Appellant’s opinion that this decision represented a step forward as far as the opponent’s rights were concerned in that it enabled him to benefit from the provisions of A 122 in the event of late filing of the statement of grounds of appeal, whereas previously this would appear to have been limited to the applicant and patent proprietor.

However, the EBA’s reasons for this decision were based on an analysis of the differences between the rights which can legitimately be invoked by the opponent and the applicant or patent proprietor, depending on whether the legal process has begun or not (cf. point [9] of the decision). This process begins in appeal proceedings when the appeal has been filed and the appropriate fee paid (cf. point [8], second sub-paragraph).

For the same reasons as those given by the EBA, the present Board maintains that, in accordance with A 99(1), the legal process begins in opposition proceedings when the notice of opposition is filed and the appropriate fee is paid.

Continuing with its analysis, the EBA decided that, since the legal process had given rise to the appeal, the opponent should be granted the same rights under A 122 as the applicant or patent proprietor in respect of the filing of the statement of grounds of appeal and the other time limits provided for in the appeal procedure, because failure to observe the procedural time limits may involve the opponent too in a loss of rights (cf. point [10] of the Reasons).

On the other hand, on the question of time limits connected with the initiation of the legal process, the EBA pointed out that, in the course of the preparatory work on the EPC, a majority of the Working Party which had looked into the scope of re-establishment of rights had considered that re-establishment should not apply to the opponent because he had other means of availing himself of his rights, in particular by bringing an action for revocation before the national courts. Clearly, under similar circumstances where it was not possible to observe the time limits connected with the initiation of the legal process, an applicant or patent proprietor wishing to appeal against a decision to refuse him a patent or to revoke it would irrevocably have lost his rights were re-establishment not possible.

It is true that in the above-mentioned decision the matter was only referred to the EBA once the statement of grounds of appeal had been filed. This naturally prompted it to base its reply on an analysis of the circumstances specific to the appeal proceedings (cf. inter alia points [5] to [11] of the Reasons). However, when the ad hoc Working Party held that the opponent should not be entitled to have his rights re-established because he had other means of availing himself of those rights, it did not intend such exclusion to apply only to the specific case of non-observance of the time limits for appeal but to all cases of failure to observe time limits before the EPO. The same generalisation is accordingly found in A 122, which does not apply only to appeal proceedings.

[3.2] Consequently, the request for re-establishment of rights by the opponent, who has failed to observe the nine-month time limit under A 99(1) for filing the notice of opposition and paying the appropriate fee, must be rejected as inadmissible, notwithstanding any arguments put forward to explain the reasons for not complying with the time limit, which are a matter for consideration in connection with an assessment of the merits and not the admissibility of the request.”

[5] The appellant  now submits that the considerations that have led the EBA to a broader reading of A 122(1) were fulfilled in the present case […]. However, decision G 1/86 [6] expressly states that “the wording of A 122(1), the historical documentation relating to the Convention and a comparison of the national laws of Members States suggest that opponents may not have their rights re-established in respect of time limits of appeals”. The further considerations of the EBA exclusively concern the particularities of the time limit for filing the statement of grounds of appeal, which the EBA distinguishes from the time limit for filing the appeal (and the corresponding payment of the appeal fee). Thus the decision is based on a situation “where the appeal has already been filed, i.e. […] the opponent has validly made known his intention of having the OD’s decision set aside” (point [9] of the reasons). Therefore, [the EBA] considered a case where “the legal process has already begun” as stated in decision T 702/89.

[6] This is not the case here, because there is one single (nine-month) time limit in opposition proceedings, within which the opposition fee has to be paid and the notice of opposition has to be filed. Therefore, in contrast to the time limit for filing the statement of grounds of appeal, and in a way that is analogous to the time limit for filing an appeal, the relevant question is whether a legally valid opposition has been filed at all. In this context, decision T 702/89 unambiguously states “that, in accordance with A 99(1), the legal process begins in opposition proceedings when the notice of opposition is filed and the appropriate fee is paid” […].

Thus the situation underlying G 1/86 is different from the present situation in several respects. First, there already was a validly filed opposition [in G 1/86], and secondly, the considerations [of the EBA] refer to the particularities of appeal proceedings rather than to opposition proceedings, where there is no distinction between the time limit for filing the opposition and the time limit for filing the statement of grounds. Both A 122(1) and the decisions G 1/86 and T 702/89 clearly indicate that re-establishment into the time limit for filing an opposition is out of the question.

[7] This outcome is appropriate (sachgerecht) not only because in opposition proceedings there is one single time limit for filing the opposition and the corresponding statement of grounds but also because the considerations underlying A 122(1), i.e. that a competitor who has not filed an opposition still can avail himself of national revocation proceedings, applies even more to opposition proceedings than to appeal proceedings.

[8] Based on the factual situations underlying G 1/86 and T 702/89, the Board draws the general conclusion that re-establishment, which is a special legal remedy that, in principle, is only available to the applicant and patent proprietor, is, in application of the principle of equal treatment, exceptionally available to all parties to inter partes proceedings when the proceedings have been validly commenced (eingeleitet) and are pending.

In the present case, however, the opposition proceedings have not been validly commenced yet. The failure to pay the administrative fee pursuant to Article 6.6 ADA in due time has triggered the legal consequence provided in Article 6.7 ADA in connection with Article 7(2) RRF, i.e. the payment is considered to have been made on the date on which the deposit account was duly replenished. It is undisputed that this happened after the expiration of the 9-month time limit for filing an opposition. In application of A 99(1) the opposition shall be deemed not to have been filed. Thus there are no pending opposition proceedings. As a consequence, a party that has failed to pay the opposition fee in due time, even if this is the consequence of the failure to meet the time limit for paying the administrative fee for replenishing the deposit account, cannot avail itself of the possibility of requesting re-establishment.

[9] The arguments of the appellant […] cannot alter this fact. Although the ADA did not exist at the time when A 122 was drafted (which is the first argument invoked by the appellant), these provisions provide particular rules in favour of the person ordering the payment (Zahlungsgeber) in case the deposit account is insufficiently funded. Thus these provisions contain their proper rules dealing with belatedness (Verspätungsregelungen). Now turning to the third argument of the appellant, these rules are to be considered as a whole and cannot be divided into more or less important acts. The law does not state whether the lack of a statement of grounds of appeal is more or less important than the failure to pay a penalty (Säumnisgebühr). Finally, the provisional communication by the Office regarding the filing of an opposition cannot alter the fact that the latter is inadmissible, even if the patent proprietor relied on this information. Otherwise the patent proprietor could not invoke the inadmissibility of the opposition, just because the Office had informed it on the filing of an opposition. If this was the case, the provisional communication on the filing of an opposition would be legally relevant to an extent that by far exceeds its mere informative character. This cannot be accepted.

[9] The appellant’s request that the decision be set aside and that re-establishment into the time limit for paying the administrative fee of 211.5 € be granted is to be dismissed. […]

The appeal is dismissed.

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T 1483/10 – Back To China

[2.1] A 14(2) allows for a European patent application to be filed in any language and then to be translated into one of the official languages. Throughout the proceedings before the EPO, such translation may be brought into conformity with the application as filed.

[2.2] According to A 153(2), an international application for which the EPO is a designated or elected Office, shall be equivalent to a regular European application (Euro-PCT application). Under A 153(5) Euro-PCT applications shall be treated as European applications. It is also a general principle that such applications must be treated as favourably as those made in a contracting state (see T 700/05 [4.1.1], also T 353/03). Hence, by analogy, A 14(2) must also allow the translation into English of a PCT application originally filed in Chinese to be brought into conformity with the original Chinese text of the application throughout the proceedings before EPO.

[2.3] The certified translation provided by the appellant with its letter of 17 January 2013 shows that the use of the term “astigmatism plate” was the result of a translation error and the correct term should have been “light-scattering plate”. Accordingly, the replacement of the term “astigmatism plate” by “light scattering plate” in claim 1 is an allowable correction made under Article 14(2) EPC and does not infringe A 123(2).

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T 1677/11 – Bad Timing

Objections under A 24 other than self-recusations are hardly ever successful. Most of the time the Boards find the allegations of partiality to be unpersuasive. In the present case, where the whole Board (!) was being objected to, the objection was rejected on another ground.

[3] Partiality objections were raised by [opponents] 1, 3, 4 and 6 against all board members under A 24(3) EPC. It was argued that, since the substantively identical parallel appeal case T 1760/11 had been decided by a board in identical composition one week previously, the present board would not bring an open mind to the present appeal.

As a first step, it is to be decided by the present board whether the said objections are admissible (cf. decision T 1028/96 [1]).

According to A 24(3), second sentence, “an objection shall not be admissible if, while being aware of a reason for objection, the party has taken a procedural step”. The principle underlying this provision is that an objection should be “raised immediately after the party concerned has become aware of the reason for the objection”, since “otherwise, the system could be open to abuse” (see decision G 5/91 [4]).

In the present case, the statement of grounds of appeal dated 22 November 2011 already contained a reference to the parallel appeal concerning to the closely related patent EP 1 020 461 […]. In addition, present [opponents] 3, 4 and 6 were also [opponents] in the corresponding appeal case T 1760/11 (as [opponents] 2, 7 and 13, respectively), and although [opponent] 1 was not a party in appeal T 1760/11, its representative was the same as that acting for [opponent] 6. Therefore, [opponents] 1, 3, 4 and 6 would have been aware of the closely related parallel appeal T 1760/11 right from the beginning of the present appeal proceedings.

A communication of the board was sent on 19 December 2011 granting the request for accelerated processing of the appeal, and informing the parties that the board then envisaged issuing an invitation to oral proceedings (OPs) by August 2012 to attend OPs from 27 to 29 November 2012 [...]. On the same day, an identically worded communication was sent out in appeal case T 1760/11, except that the date foreseen for OPs was stated to be 13 to 15 November 2012. Both communications were signed by the same rapporteur.

At this stage in the proceeding, present [opponents] 1, 3, 4 and 6 would therefore have been aware that the boards had been constituted in both cases, that the rapporteur was the same, and that appeal T 1760/11 was likely to be decided prior to the present appeal. Moreover, the information would have been readily available by online file inspection (entry from 20 October 2011) that the boards were identical in both cases, as foreseen in Article 7 of the business distribution scheme, which stipulates that, where appeals pending before the board are closely linked, in particular by involving similar legal or factual questions, the chairman may order that the board decides in the same composition (see Supplement to OJ EPO 1/2012, 12 to 25).

Replies to the statement of grounds of appeal were inter alia received from [opponents] 1, 3 and 6, but not from [opponent] 4 […]. However, it is to be noted that [opponent] 4 did file a response in case T 1760/11 (as [opponent] 7), as did [opponents] 3 and 6 (as [opponents] 2, and 13, respectively). No concerns were voiced by said parties in either case with respect to the identical compositions of the boards.

Thereafter, summons were sent out on 6 July 2012 to attend OPs on 27 to 29 November 2012, as previously announced. Corresponding summons were sent out on the same day in appeal case T 1760/11 to attend OPs on 13 to 16 November 2012. The board’s composition appearing on the these summons was identical in both cases and had not changed with respect to that previously available by online file inspection.

These summons therefore provided confirmation to the parties that the boards were to be identically constituted in both cases and that OPs for T 1760/11 would take place two weeks prior to those for T 1677/11. Again no concerns were voiced by any of the parties in this respect, and the representatives of present [opponents] 1, 3, 4 and 6 all attended the OPs in case T 1760/11 from 13 to 16 November 2012.

It was only after an adverse decision in that case had been announced that said [opponents] raised their objections of suspected partiality in the present case. However, as outlined above, the reasons for said objections, namely, the close link between the cases and the identical compositions of the boards, had been known to the parties long before the date of the first OPs. Therefore, regardless of whether the [opponents], notably [opponent] 4, took a specific procedural step in the present appeal proceedings, it is undoubtedly the case that they did not submit their objection immediately after becoming aware of the reasons therefore. Moreover, in view of the fact that the objections raised are linked to both appeals, attendance of OPs for T 1760/11 must be regarded as a procedural step within the factual context of the present case, in the sense of A 24(3).

Consequently, in view of their timing, the objections under A 24(3) are rejected as inadmissible.

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T 487/12 – Likely? So what?

This is an appeal of a patent proprietor whose patent had been revoked.

The decision contains an interesting passage on compliance of the main request with the requirements of A 123(2).

The application as filed had 15 claims, whereby claims 1, 2 and 3 read as follows:

1. A copolymer of ethylene and an alpha olefin having 3 to 10 carbon atoms, said polymer having

(a) a density in the range 0.900 to 0.940

(b) an apparent Mw/Mn of 2 - 3.4

(c) I₂₁/I₂ from 16 to 24

(d) activation energy of flow (Ea) from 28 to 45 kJ/mol

(e) a ratio Ea(HMW)/Ea(LMW)>1.1, and

(f) a ratio g’(HMW)/g’(LMW) from 0.85 to 0.95.

2. A copolymer according to claim 1 having an apparent Mw/Mn in the range 2 to 3 and I₂₁/I₂ from 18 to 24.

3. A copolymer according to claim 2 having an apparent Mw/Mn in the range 2.5 to 3, an activation energy of flow from 30 to 35 KJ/mol, and a ratio Ea(HMW)/Ea(LMW) >1.2.

The patent was granted with a set of 10 claims, whereby claim 1 read as follows, amendments compared to claim 1 as originally filed being underlined:

A copolymer of ethylene and an alpha olefin having 3 to 10 carbon atoms, said polymer having

(a) a density in the range 0.900 to 0.940

(b) an apparent Mw/Mn of 2.5 - 3.0

(c) I₂₁/I₂ from 16 to 24

(d) activation energy of flow (Ea) from 30 to 35 kJ/mol

(e) a ratio Ea(HMW)/Ea(LMW)>1.2, and

(f) a ratio g’(HMW)/g’(LMW) from 0.85 to 0.95

wherein g’ represents the ratio of the measured intrinsic viscosity divided by the intrinsic viscosity of a linear polymer having the same molecular weight, HMW = high molecular weight species, and LMW = low molecular weight species.

According to the patent proprietor, the values of five of the six parameters of claim 1, i.e. parameters (a), (b), (d), (e) and (f) were disclosed at page 3, lines 11-17, of the application as filed. Parameters (a) and (f) were the same throughout the application. The value ranges for the parameter (b), (d) and (e) were within the broadest ranges disclosed for said parameters, i.e. represented preferred ranges. The claimed range of 16-24 for parameter (c) corresponded to the broadest disclosure of this parameter in the application as filed. The combination of the broadest range of parameter (c) with the - in some cases preferred - values of the remaining five parameters was inherently disclosed in the application as filed. Furthermore from examples 1, 4, and 5 it was seen that the values for parameter (e) were 1.55, 1.29 and 1.34, all of which were within the claimed range. Similarly from examples 1-3 it would be seen that parameter (f) had the values 0.912, 0.915 and 0.912. Examples 4 and 5 disclosed all the parameters of claim 1 apart from parameter (f). As the value of parameter (f) reported in examples 1-3 was consistently in the middle of the claimed range it was highly likely that the value of parameter (f) in examples 4 and 5 was also within the claimed range. Consequently the skilled reader could derive the subject-matter of claim 1 from a full reading of the application as filed.

The Board won’t allow such reasonings:

A 123(2)

[2.1] The preamble and features (a), (c) and (f) of claim 1 are disclosed in originally filed claim 1 and at page 2, line 28 - page 3, line 3 of the description of the application as filed. The definitions of g’, HMW and LMW are disclosed at page 4, lines 5-20.

[2.2] The specified values of features (b), (d) and (e) of present claim 1 are disclosed in originally filed claim 3. However in the application as originally filed claim 3 is dependent not on claim 1 but on claim 2 which specifies a value of feature (b) of 2 to 3 and a value of feature (c) of 18 to 24 […].

[2.3] Consequently the ranges for features (b), (d) and (e) specified in operative claim 1 are originally disclosed only in combination with a range of feature (c) of from 18-24, not however with the broader range of 16-24 as now specified in claim 1.

[2.4] The description of the application as filed does not provide any basis for the presently claimed subject matter since in the passage starting at page 2, line 27, and concluding at page 3, line 17, the subject matter of each of claims 1, 2 and 3 is explicitly set out as closed sets of six features.

Thus the description and the claims of the application as filed are consistent with each other in that only certain combinations of values for features (a)-(f) are permitted. There is no statement, express or implied, that the various ranges of values for features (a)-(f) can be freely combined independently of each other. In other words, according to the disclosure of the application as originally filed there is no indication that the ranges of values of the six features (a)-(f) are not interdependent.

Operative claim 1 therefore discloses a combination of values which is not disclosed as such in the description or claims of the application as filed.

[2.5] Recourse to the examples does not lead to any other conclusion.

The examples each represent a single point disclosure, i.e. a specific combination of values for each of the six parameters mentioned in present claim 1.

Since, in view of the considerations set out in section [2.4] above, only certain combinations of the features (a)-(f) are permitted, it has to be concluded that individual parameters from the examples may not be isolated and generalised.

Further, none of the examples discloses all of the six features specified in the claims, meaning that it is not even established that any of the examples actually fall within the scope of the claims.

Considerations, as advanced by the [patent proprietor], of the likelihood or probability of certain parameters being within the scope of the claims are not appropriate when considering the question of compliance with the requirements of A 123(2), as held for example in decision T 383/88 [2.2.2].

The main request therefore does not meet the requirements of A 123(2) and has to be refused.

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