Farewell

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

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

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

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

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

All the best

oliver

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

T 434/12 – New Lines Of Attack

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

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

The Board refused to grant the adjournment:

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

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

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

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

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

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

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

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

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

In the end the patent was revoked.

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

The file wrapper can be found here.

T 2165/10 – In The Archives

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

The file wrapper can be found here.

T 59/08 – More On Sufficiency

This is a revocation appeal.

The independent claims on file read:

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

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

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

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

(i) a multimodal polyethylene composition suitable for pipes,

the multimodal polyethylene having

(ii) a density of 0.930-0.965 g/cm³,

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

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

and comprising

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

The file wrapper can be found here.

T 163/13 – Let’s Be Reasonable

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

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

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

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

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

The file wrapper can be found here.

T 1937/10 – Just A Question Of Strength

This decision –  on an appeal against the rejection of an opposition as inadmissible – reminds us that one has to distinguish between inadmissibility and unallowability.

[1.1] The notice of opposition is founded on the sole objection of lack of novelty against claim 1 of the contested patent, relying only on an alleged public prior use (D1 to D3) and a prior disclosure of that same device (D1, D3, D4). The inadmissibility of the opposition is based on the ground of insufficient substantiation, in particular with regard to the question of what has been actually disclosed […].

[1.2] The relevant requirements concerning substantiation of the opposition are set out in R 76(2)(c), according to which the notice of opposition shall contain a statement of the extent to which the European patent is opposed and of the grounds on which the opposition is based, as well as an indication of the facts and evidence presented in support of these grounds.

[1.3] It is clear from the EPO Form 2300 dated 28 November 2007 filed by the [opponent] that the opposition was filed against the patent as a whole (extent) and based on the grounds of A 100(a), namely lack of novelty and lack of inventive step (grounds). This is further confirmed by the notice of opposition itself. The first two conditions of R 76(2)(c) are therefore clearly fulfilled.

[1.4] With respect to the last condition (facts and evidence), according to the established case law the notice of opposition must indicate the “when”, “what” and under “what circumstances”, in particular “to whom”, the alleged public prior use was made available (T 522/94 [headnote IV, 10, 12, 20 to 25]; T 328/87 [3.3]).

[1.5] In the present case, the [opponent] cited documents D1 to D5 with its notice of opposition. D5 was merely cited for dependent claims, it is therefore not relevant for this decision. It indicated that a relevant device, as in D1, was made public to the attendees of a public seminar, i.e. to members of the public not bound by secrecy, held in Kemi, Finland on 23-34 March 1995 (circumstances and when). It filed D2 in this respect, constituted of a cover page, a programme page and a one page description of an AQS300 device with a picture and a drawing of this device.

The [opponent] argued in its notice of opposition that D1 discloses all the features of claim 1 except the features of the characterising portion. The latter features are alleged to be comprised in the device shown at the said seminar (what). D2 and D3 were filed as evidence to support this fact.

The same device was the subject of a prior disclosure in the article D4, showing the same picture as in D2. The photos D3 were filed as supporting evidence for this device as well.

In the light of these “what”, “when” and “what circumstances”, the [opponent] concluded that novelty of the subject-matter of claim 1 was not given.

[1.6] As indicated in T 597/07 [2.5] of the reasons, according to the established case law, “it is not required for an opposition to be admissible that the arguments brought in support are conclusive or that the opponent’s statements are true. What is required is that the patentee and the opposition division are put in a position of understanding clearly the nature of the objections and the evidence and arguments in support”.

It is further referred, for instance, to T 1022/99 [2.2] of the reasons, indicating that the facts - what, when, what circumstances of the alleged public prior use - must be indicated within the opposition period, while the evidence can be brought later in the proceedings as long as it is indicated.

http://www.epo.org/law-practice/case-law-appeals/pdf/t991022fu1.pdf

[1.7] Therefore, a distinction must be made between examining admissibility of the opposition and its substantive merit (see Case Law, 7^th edition 2013, chapter IV.D.3.3.3).

This distinction, contrary to the [patent proprietor’s] opinion, was not made in the impugned decision which appears to be focused only on assessing whether the [opponent’s] case of alleged prior use was conclusive and convincing.

[1.8] The [patent proprietor] holds the view that T 597/07 requires that the nature of the evidence is clearly understandable at the time when the opposition is filed and considers this element to be missing in the present case.

It argues that it is not unambiguously established that D2 and D3 are prior art documents. In particular, it is not clear whether page 3 of D2 actually belongs to D2 itself as there is no direct link between said page 3 and the first two pages (cover and programme of the seminar). With respect to D3, the pictures might have been taken on any device at any time and their link to the other documents D1, D2 or D4 merely relies on [opponent’s] allegations.

Even though the pictures look similar, the link between D2 and D4 is also missing and cannot be unambiguously established. Similarly, the link between D1 and D4 is unclear as there is no mention in D1 of the machine AQS300 of D4.

In fact, the notice of opposition merely alleges that D1 to D4 refer to the same device, without giving any evidence, however, how these documents are actually interrelated. The opposition relies on allegations without even indicating how these allegations could be proven.

Consequently, further investigations would be needed for the [patent proprietor] or the opposition division to clarify and understand the nature of evidence. That makes the opposition inadmissible.

[1.9] The Board cannot share the [patent proprietor’s] view for the reasons given during the oral proceedings and recited below.

The decision T 597/07 does not refer to the “nature of evidence” but rather to the evidence as such. The sentence quoted under point [1.6] above is to be understood as that the patentee and the opposition division are put in a position of understanding clearly:

• the nature of the objections and
• the evidence and
• arguments

in support, i.e. meaning that the “nature” only relates to the objections, not to the evidence itself as argued by the [patent proprietor].

Furthermore, D1 (its translation D1a), D2, D3 and D4 (for its introductory part that has been translated and its pictures) are understandable documents, D1 and D4 being indisputable prior art documents as admitted by the [patent proprietor]. What the evidence is alleged to be proving is explained by the [opponent] in the notice of opposition (see also point [1.5] above), in particular with respect to the sole alleged distinguishing feature of the characterising part of claim 1 over D1. This characterising part reads as follows:

“at least some of said upper log-receiving surfaces (16) or of said leading edge regions (18) comprise a plurality of projections projecting therefrom, said projections comprising an outermost contact region for contacting logs being transferred between said spaced locations, said contact regions being configured as a peak”

In the notice of opposition the [opponent] argued that this feature could be seen in the picture contained in D2, which was further alleged to be clarified by the photos of D3, alleged to have been taken on the same device as shown in D2. The same argument was brought forward regarding the identical picture in D4, relating to the allegedly same installation as discussed at the seminar (D2). The relationship between these documents is therefore sufficiently discussed.

When reading the notice of opposition, the nature of the objections (lack of novelty), the evidence (D1 to D4) and the arguments (interrelation between D1-D4) in support, i.e. the case the opponent tries to make, is therefore clearly understandable for the Board.

Whether the device of D1 was actually the same as presented at the seminar (D2) or was actually the same as discussed in D4, i.e. whether the [opponent’s] statements in the notice of opposition are proven or not, does not relate to the admissibility of the opposition but rather to its substantive merit. The same applies to the question whether D2 is the complete document and whether the photos of D3 relate to the device of D2 or D4 as it was alleged.

An opposition can indeed be found admissible on the basis of the statements, documents or copies thereof indicated in/filed with the notice of opposition which, later in the opposition proceedings, may eventually be considered incomplete, insufficient or simply wrong.

This, however, does not put the admissibility of the opposition into question. It only relates to the strength of the case.

Doubting whether documents cited in the notice of opposition are actually what they are alleged to be, as in the present case by the [patent proprietor] and the impugned decision, is an issue of merit of the opponent’s case, not of its admissibility.

[1.10] In view of the above, the Board considers that the notice of opposition meets the requirements of R 76(2)(c). Consequently, the opposition is admissible.

The Board then remitted the case for further prosecution.

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

The file wrapper can be found here.

T 2041/09 – Grain Sizes

Claim 1 on file read :

Fireproof product made of a mix of additives, at least one binder and an admixture (Zusatz), characterised in that the admixture consists in synthetic TiO₂-containing particulate materials having an average grain size d50 from 0.2 to 2000 µm. (my emphasis)

*** Translation of the German original ***

[3.1] In the impugned decision the Examining Division (ED) established that the subject-matter of the then pending claims 1 to 6 was not novel over the disclosure of documents D1 and D2.

[3.1.1] Documents D1 and D2 disclose TiO₂-containing additives consisting of residues of the TiO₂ production, a binder (e.g. a cement) and one or several components selected from inter alia SiO₂ and Al₂O₃ […]. The TiO₂-containing additives are powder mixtures having a grain size of 50 to 5000 µm […]. However, documents D1 and D2 do not disclose any grain size distribution. Particles having a grain size of 50 to 5000 µm do not necessarily have an average grain size for 0.2 to 2000 µm because they could, e.g. consist of particles > 2000 µm only.

[3.1.2] Thus documents D1 and D2 do not disclose TiO₂-containing particulate materials having an average grain size from 0.2 to 2000 µm, so that these documents do not destroy the novelty of the subject-matter of claim 1.

[3.2] In the course of the examining proceedings there were additional objections of lack of novelty of the subject-matter of the then pending claims over documents D3 and D4.

[3.2.1] Document D3 discloses TiO₂-containing additives consisting of inter alia residues of TiO₂-pigment production and Fe₂O₃. The product does have a grain size of 100% <2 mm (i.e. necessarily an average grain size of up to 2000 µm) […], but it does not contain any binder.

[3.2.2] Document D4 discloses a fireproof material containing inter alia Al₂O₃, SiO₂, FeO, TiO₂, and boric acid […]. This document discloses all the components of the fireproof product according to claim 1 of the application under consideration, but it does not disclose any grain size for the products.

[3.2.3] Thus documents D3 and D4 do not disclose all the features of claim 1, so that they do not destroy the novelty of the subject-matter of claim 1.

[3.3] To sum up, the feature according to which the average grain size of the synthetic TiO₂-containing particulate materials is between 0.2 to 2000 µm, as required by claim 1, cannot be directly and unambiguously derived from any of documents D1, D2, and D4, so that these documents do not destroy the novelty of the subject-matter of claim 1. Document D3 does not disclose that the product contains a binder, so that this document does not destroy the novelty of the claimed subject-matter either.

[3.4] The statement of the ED according to which there is no technical effect obtained over the whole claimed range is not relevant for the assessment of novelty, because novelty and inventive step are two distinct patentability requirements. A technical effect that occurs in a claimed range does not establish the novelty of a numerical range that is novel in itself but only confirms the novelty of this claimed numerical range, which has already been established. The question of whether there is a technical effect or not, however, remains to be answered in the context of inventive step (see T 1233/05 [4.4]; T 230/07 [4.1.6])

[3.4] Thus, for the above reasons the Board comes to the conclusion that the subject-matter of claim 1 is novel over documents D1 to D4.

The Board then remitted the case for further prosecution.

Should you wish to download the whole decision (in German), click here.

The file wrapper can be found here.

J 14/12 – Debit (Dis)order

This decision deals with a request for the reimbursement of certain fees for a divisional application.

On filing the divisional application on EPO Form 1001E, no mode of payment was specified under point 42 “Payment” of that form. An “Internal fee calculation sheet”, which is automatically generated by default by the online filing system using the data entered in EPO Form 1001E, was attached to the form in which the filing fee, the fee for a European search and the renewal fees for the 3rd to 10th years were listed by the applicant.

On October 20, 2010, the EPO received the following request:

On the basis of this request the Receiving Section (RS) gave the instruction to debit the filing fee and the search fee. No renewal fees for the 3^rd to 12^th years were paid by the applicant, or debited from the representative’s account on the basis of his request of 20 October 2010, within four months after the filing date.

After having been informed accordingly by the EPO, the applicant’s representative, on March 14, 2011, paid the renewal fees for the 3^rd to 12^th years and the additional fees of 50% relating to all of those renewal fees. Together with these fees, the filing fee and the search fee were paid a second time; this second payment was later refunded by the EPO.

With a letter dated March 18, 2011, the appellant requested, as a main request, that the additional fees for the 3^rd to 12^th years be refunded, and, as an auxiliary request, that the additional fees relating to the renewal fees for the 3^rd to 10^th years be refunded. It took the view that the respective renewal fees for the 3^rd to 12^th years were paid in time. After having realized the omission in EPO form 1001E, the appellant, with its letter of 20 October 2010, had requested that the fees which fell due in relation to the filing of the divisional application be debited. This authorization constituted a timely payment of all fees listed on the “Internal fee calculation sheet” of the EPO, including the fees for the 3^rd to 10^th years. The same applied for the 11^th to 12^th years following decisions T 170/83 [6], and T 152/82 [8-9].

The RS rejected both the main and the auxiliary request.

The Board partially allowed the appeal:

[2] Under A 86(1), first and second sentences, renewal fees for the European patent application shall be paid to the EPO in accordance with the Implementing Regulations. These fees shall be due in respect of the third year and each subsequent year, calculated from the date of filing of the application. R 51(3), first sentence, provides that renewal fees already due in respect of an earlier application at the date on which a divisional application is filed shall also be paid for the divisional application and shall be due on its filing. On 1 October 2010, the filing date of the divisional application, renewal fees for the earlier application with the filing date of 2 September 1999 had fallen due for the 3^rd to 12^th years (2000 - 2011).

[3] These fees and any renewal fee due within four months of filing the divisional application may be paid within that period without an additional fee (R 51(3), second sentence). As R 51(2) also provides, in case a renewal fee is not paid in due time, the fee may still be paid within six months of the due date, provided that an additional fee is also paid within that period. Consequently, payment of the renewal fees that fell due for the present divisional application could be made until 1 February 2011 without an additional fee and until 1 April 2011 with an additional fee of 50% of the belated renewal fee (Article 2(1) Rules relating to Fees of 20 October 1977 as adopted by the decision of the Administrative Council of the European Patent Organization of 7 December 2006 and as[last]amended by the decision of the Administrative Council of 9 December 2008, Supplement to OJ EPO 2/2009 (RFees) and Schedule of fees and expenses of the EPO (applicable as from 1 April 2010), 1 A.5, see Supplement 1 to OJ EPO 3/2010).

[4] On 20 October 2010 the applicant’s representative wrote a letter to the EPO which included the following wording:

“It is kindly asked to debit the fees which fell due for payment with the filing of the above-mentioned divisional application from deposit account No. 28000610.”

[5] This mode of payment is not provided for in Article 5(1) RFees 2008.

[6] Under Article 5(2) RFees 2008 the President of the EPO may allow other methods of paying fees than those set out in paragraph 1. In the Arrangements for deposit accounts (ADA) and their annexes (valid as from 1 April 2009), Supplement to OJ EPO 3/2009, the President of the EPO made available debiting procedures in respect of fees (pt 6.1 ADA). Debiting occurs in principle on the basis of a debit order signed by the account holder and may be a debit order for individual fees that may be filed on paper, preferably on EPO form 1010 (pt. 6.2 ADA). The debit order must be clear, unambiguous and unconditional. It must contain the particulars necessary to identify the purpose of the payment, including the amount of each fee or expense concerned, and must indicate the number of the account which is to be debited. Provided there are sufficient funds in the deposit account to cover the total fee payments indicated for the application referred to in the order or, in the case of an order containing a list of applications for each application referred to, this date is considered to be the date on which payment is made (pt 6.3 ADA).

[7] When read in conjunction with the “Internal fee calculation sheet”, the debit order received on 21 October 2010, in which it was asked to debit the fees which fell due for an explicitly mentioned divisional application, was clear, unambiguous and unconditional as regards the 3^rd to 10^th renewal fees. The debit order also indicated the number of the account which was to be debited. In the Board’s judgment, in the case at hand, the purpose and amount of each of these fees were clearly derivable from the “Internal fee calculation sheet”, including the renewal fees for the 3rd to 10th years. By debiting the filing fee and the fee for a European search the EPO showed that it heeded the debit order in combination with the “Internal fee calculation sheet”, filed as an attachment to the application, irrespective of whether it was obliged to do so or whether the “Internal fee calculation sheet” was uploaded to the electronic file. Consequently, 21 October 2010 is to be considered as the date on which the payment for the renewal fees for the 3^rd to 10^th year was made and, in relation to these years, no additional fee fell due. Payments of fees made without a legal basis are to be reimbursed.

[8] As to the renewal fees for the 11^th and 12^th years, the purpose and the amount of each of these fees were neither stated in the debit order nor were they contained in the “Internal fee calculation sheet”. As a consequence, the conditions for a valid debit order set out in the ADA as mentioned above were not fulfilled. A valid payment was effected on 14 March 2011 only, i.e. within the six-month time-limit provided for in R 51(3). Consequently, in respect of the renewal fees for the 11^th and 12^th years, the additional fees fell due and cannot be reimbursed.

[9] No different conclusion can be drawn from the decisions of the Board of Appeal in cases T 170/83  or T 152/82. Decision T 170/83 dealt with a case in which the purpose (payment of the opposition fee) was clear. The same applies in relation to decision T 152/82 in which the purpose of the payment (appeal fee) was explicitly indicated.

[10] Consequently, the appellant’s main request is not allowable, but the auxiliary request can be allowed.

[11] The conditions for reimbursement of the appeal fee are not met in the present case. Under R 103(1)(a) the appeal fee shall be reimbursed where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation. The Board cannot identify any procedural deficiencies. In the present decision, the Board is taking a view on the question of interpretation of the applicant’s debit order that differs from that of the RS. However, the fact that the Board has come to a different conclusion from the department of first instance does not by itself mean that the latter committed a substantial procedural violation (see for example decisions T 87/88; T 538/89, T 182/92) but is rather a matter of judgment, which does not amount to a procedural violation (see for example decision T 182/92 [7] and Case Law of the Boards of Appeal of the EPO, 7^th edition 2013, IV.E.8.3.5). Consequently, the request for reimbursement of the appeal fee must be refused.

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T 816/09 – Untechnical Measurements

This is an examination appeal.

Claim 1 on file read:

1. A system for operating a virally marketed facility, comprising:a processor;a memory coupled to the processor;a user interface coupled to the processor;wherein the processor is to:

• measure virality of the facility based on a conversion rate and a propagation rate;
• determine potential options for increasing virality; and
• execute potential options for increasing virality.

The Examining Divison (ED) considered that the problem addressed was of a business nature, namely how to enhance the profit of a virally marketed business facility. The solution proposed was to measure the effectiveness of the viral marketing campaign by tracking the results (number of invitations, number of registrations) and to pursue only business options that increased the virality and profitability of the campaign. No technical problem other than the implementation of the business model on a computer system appeared from the application. The implementation did not go beyond notorious technical functions associated with any business/administrative task on a computer system. Thus the ED refused the application for lack of inventive step.

The Board came to the same conclusion:

[3] In the light of A 52(1)(2)(3), A 56 EPC 1973 requires a non-obvious technical contribution (see e.g. T 641/00 [headnote 1]; T 1784/06).

[4] The Board does not consider the problems put forward by the appellant to have a technical character.

Viral marketing utilises human social behaviour to (self-)propagate information which effectively advertises a facility (such as a website). It is a marketing person’s choice to consider high propagation and conversion rates of an advertisement as indicators of success of a marketing campaign and to call those rates the virality of the marketed facility.

It is the marketing person that seeks to increase the marketing success as judged by his/her definition of virality.

[5] The Board does not consider that any “measurement of any property is an inherently technical task” […]. It will crucially depend on what is “measured”, and whether or not the measurement involves technical means. For example, the description mentions […] that the ultimate “measure” of success is revenue, which is a financial concept. At paragraph 0047, the virality of a website is measured by evaluating public discussion, which could simply be achieved by interviews (mental acts).

[6] Thus, the technically skilled person comes into play only at the implementation level. However, counting click rates to measure the popularity or virality of a website does not require an inventive step.

This finding is implicitly acknowledged by the application which leaves technical implementation details to the skilled reader.

Trying out whether a variation of a website increases or decreases its popularity does not imply any non-obvious technical consideration, either.

[7] The virality of a website (or other facility) might conceivably be increased by providing it with innovative technical features.

However, claim 1 does not define the nature of the “options” to be executed. Hence, no technical contribution can be derived from the “options for increasing virality”. This view is confirmed by the options defined in claim 2, such as providing additional commercial aspects of the facility […].

[8] Therefore, the Board judges that the system for operating a virally marketed facility according to claim 1 and the corresponding apparatus according to claim 7 do not involve an inventive step.

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