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 1395/09 – Clean/r Shaven

Claim 1 as maintained by the Opposition Division (OD) read:

1. A safety razor comprising a blade unit (2) having at least one blade (4) with a sharp cutting edge, a handle (1) on which the blade unit is carried, an electrical device (24,26), and a control device (16) for controlling operation of the electrical device, [characterized in that] the control device (16) [is] being responsive to a water detecting arrangement whereby the electrical device is actuated for cleaning the blade unit when a person using the razor immerses the blade unit (2) into a body of water [for cleaning the blade unit], the water detecting arrangement comprising a pair of electrodes, at least one of which is provided on the blade unit, characterized in that the electrodes are spaced apart from each other so that, in normal use of the razor, the electrodes will not be bridged by shaving foam collected on the blade unit in the course of shaving.

The Board raised a clarity objection, much to the dismay of the patent proprietor:

[1] Claim 1 of the main request (i.e. claim 1 of the patent as maintained by the OD […]) comprises the functional definition of the spacing of the pair of electrodes: “the electrodes are spaced apart from each other so that, in normal use of the razor, the electrodes will not be bridged by shaving foam collected on the blade unit in the course of shaving”. This defines a result to be achieved.

[1.1] In its communication annexed to the summons to oral proceedings (OPs) the Board remarked that, since this feature, which had been introduced during the opposition proceedings into claim 1, was taken from the description of the patent in suit, the issue of clarity of the wording of claim 1 as maintained has to be examined […].

[1.2] The [patent proprietor] argued at the OPs that the Board, particularly in the light of G 9/91 [18], would not be entitled to examine ex-officio this amendment since the [opponent] did not raise any corresponding clarity objection in the entire proceedings, let alone in its statement of grounds of appeal.

These arguments cannot hold for the following reasons.

[1.3] First of all, the quoted decision G 9/91 concerns the extent and power of examination in opposition cases by the OD and the Boards of Appeal and the principle of examination by the EPO of its own motion as laid down in A 114(1) with respect to grounds of opposition. This is clear from the quoted point 18 of its reasons which states “Although A 114(1) formally covers also the appeal procedure; it is therefore justified to apply this provision generally in a more restrictive manner in such procedure than in opposition procedure. In particular with regard to fresh grounds for opposition, for the above reasons the Enlarged Board considers that such grounds may in principle not be introduced at the appeal stage” (emphasis added by the Board).

[1.3.1] As admitted by the [patent proprietor] at the OPs clarity does not represent a ground of opposition as specified in A 100(a) to 100(c). Nonetheless as soon as amendments are made in the claims or the specification during the opposition and/or appeal proceedings the verification that all requirements of the EPC are met has to be carried out.

This view is supported by G 9/91 [19] wherein it is further stated that “In order to avoid any misunderstanding, it should finally be confirmed that in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC (e.g. with regard to the provisions of A 123(2) and (3))” (emphasis added by the Board).

This conclusion is fully in line with the longstanding case law (see Case Law, 6th edition 2010, section VII.D.4.2; see e.g. T 227/88; T 472/88 and T 922/94). Where the OD, in the impugned decision, has not even discussed the issue of clarity, it is up to the Board to do so.

[1.3.2] The [patent proprietor] argued also on the basis of the statement of the EBA in G 9/91 that the appeal procedure is more a judicial procedure for principally reviewing the decisions of the first instance and by its nature less investigative on the part of the Board. As the opponent had not objected to the clarity of this claim in the opposition proceedings, nor in the statement of grounds of appeal, the Board overstepped its competence in itself raising the issue.

However, in the present case the [opponent] raised objections under A 83 in its statement of grounds of appeal […] in that the patent did not define what is meant by the term “normal use of the razor” (one of the amended features objected to by the Board) nor what is “the amount of shaving foam collected on the blade unit in the course of shaving” (the other amended feature objected to by the Board). These objections had already been raised during the opposition proceedings […] and have been discussed at the OPs.

Since the issue is in the proceedings and is related to amended features in the claim, the Board considers it perfectly in order for it to address it on its own motion as an issue of clarity of claim 1 of the patent as maintained, even on the premise advanced by the [patent proprietor]. In this respect it does not matter whether the issue was raised under A 83 or A 84.

[1.4] As far as the amendments are concerned, the Board remains of the opinion that claim 1 as maintained does not comply with A 84, for defining a result to be achieved “… the electrodes are spaced apart from each other so that, in normal use of the razor, the electrodes will not be bridged …”. This result is influenced by the unspecified shaving foam, its amount, the hardness of the water used for shaving, etc. Further, it includes the vague and unspecified term “in normal use of the razor”; it is not clear what that feature means in practice and what limitations are implied by “a normal use”.

[1.5] The [patent proprietor’s] arguments to the contrary cannot hold for the following reasons.

In the present case, as convincingly argued by the [opponent], it is actually possible to more precisely define the subject-matter claimed (see e.g. claim 1 of the first auxiliary request) without unduly restricting the claim. Further, it is considered to be impossible to determine the distance between the pair of electrodes by experimentation without undue burden for the person skilled in the art. This is due to the fact that the result of such experiments, i.e. whether or not the electrodes are bridged when varying the distance between them, is primarily dependent on the electrical conductivity of the used, but unspecified shaving foam and its unspecified components as well as the amount thereof and the hardness of the water used. The patent in suit is absolutely silent in this respect and gives no guidance at all. Hence the quoted conditions for allowing this functional definition are considered not to be met in the present case.

[1.6] The Board therefore considers that claim 1 of the main request contravenes A 84. The main request is therefore not allowable.

NB: This decision has more to offer. If you are interested in how G 1/99 (defining exceptions to the principle prohibiting reformatio in peius) is to be applied, you might want to have a look at point [2.2] et seq. of the reasons (and in particular point [2.3.2]).

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

The file wrapper can be found here.

T 208/11 – Just Pondering

This decision deals with an allegedly late-filed ground for opposition.

*** Translation of the German original ***

[2.1] According to its own statements, the [opponent] has raised the ground for opposition pursuant to A 100(c) for the first time during the oral proceedings (OPs) before the Opposition Division (OD). However, this submission is not mentioned in the impugned decision or in the minutes of the OPs. The [opponent] has requested a correction of the minutes, but the OD has dismissed this request in its communication dated December 14, 2010. This communication shows that the OD was of the opinion that the [opponent] had neither made a “formal” request nor submitted detailed arguments supporting [the ground for opposition] and that it was for that reason that it decided to dismiss the request.

[2.2] According to the declaration in lieu of oath by Dr A. (D33), who had accompanied the professional representative to the OPs, “the request was dismissed by the chairman and the introduction of the ground for opposition into the proceedings was not admitted”. The representative of the [patent proprietor], who had also taken part in the OPs, has not contested that the [opponent] had raised the new ground for opposition. He only declared that he could not recall the details of the discussion.

[2.3] In view of this situation, considering the facts and the evidence, the Board of appeal has come to the conclusion that the ground for opposition pursuant to A 100(c) has been raised during the OPs but that the OD has exercised its discretional power pursuant to A 114(2) and decided not to admit this objection.

[2.4] The argument of the [patent proprietor] according to which it was not possible to introduce new grounds for opposition after the expiry of the time limit for filing an opposition is not in line with the established case law of the Boards of appeal (see G 9/91 [16]), according to which under certain circumstances the OD may, in application of A 114(1), consider a ground for opposition raised by the opponent after the expiry of the time limit for filing an opposition or even introduce a new ground of its own motion. It is true that in the present case the OD has not made use of this possibility, but this does not alter the fact that the new ground for opposition pursuant to A 100(c) was adduced during the opposition proceedings and, therefore, does not constitute a new ground that had been put forth for the first time during the appeal proceedings (cf. T 986/93 [2.4]).

[2.5] In its decision G 9/91 mentioned above the Enlarged Board of appeal has defined the conditions for an examination of grounds for opposition invoked after expiry of the time limit for filing an opposition by stating that there had to be prima facie relevant reasons for the grounds for opposition to be relevant and [that those reasons] would make it impossible to maintain the patent in its entirety or partly.

In the present case the amendment concerns a feature that is not disclosed in the original application as filed. The [opponent] has provided credible reasons […] that there is no support for this amendment in the application. The Board is of the opinion that the ground for opposition pursuant to A 100(c) to be prima facie very relevant.

The Board may take into account a ground for opposition which the OD has not admitted in application of A 114(2) if [the Board] is of the opinion that the OD has exercised its discretion wrongly (cf. T 986/93 [2.4] and T 620/08 [3.4]). In the present case neither the impugned decision nor the minutes of the OPs before the OD contain indications regarding the new ground for opposition or its dismissal, so that it is not clear according to which criteria the OD has exercised its discretion. The communication […] dismissing the requested correction of the minutes only refers to formal criteria such as a corresponding request or a lack of substantiation. It does not mention factual criteria that led to the dismissal of the new ground. Apparently the OD has not examined the question as to whether the new ground is to be considered prima facie relevant or not. Thus the decision of the OD not to take into account the new ground was not taken in a correct way.

In view of these circumstances and the fact that the Board considers the new ground for opposition to be prima facie very relevant, this ground is taken account of in the proceedings. For the sake of efficient proceedings and with the approval of the parties the Board has decided to decide itself on this ground within the framework of its powers under A 111(1).

As you might have guessed, the requests were found not to comply with A 100(c) / A 123(2) and the appeal was dismissed.

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

The file wrapper can be found here.

T 947/09 – Late Objections

In case you had doubts – Article 12(4) RPBA also applies to late filed objections, as the present decision illustrates

[1] In the “Notice of opposition”, the opponent/appellant raised an objection under A 100(b) concerning the plasmid shown in Figure 2B and described in Example 2 of the patent-in-suit. A further objection concerned the subject-matter of claim 6 ([…]. Both objections were addressed by the opposition division (OD) in its communication annexed to the summons to oral proceedings (OPs) […]. In its reply to this communication, the opponent/appellant referred only to A 100(a) EPC/A 56 EPC and no comments were made on A 100(b). According to the “Minutes of the OPs before the OD” (hereinafter the “Minutes”), the parties had no comments under A 100(b) in addition to those filed in writing […]. As regards A 100(b), the OD in the decision under appeal gave only reasons for the opponent/appellant’s objections raised in the “Notice of opposition”. The decision of the OD on these objections was not contested in the appellant’s grounds of appeal and thus, it is not part of the present appeal proceedings.

[2] In the statement of grounds of appeal, the appellant raised a new objection under A 100(b) based on an alleged lack of guidance of the patent-in-suit for performing the invention over the whole range claimed […]. Although this objection is new under A 100(b), it is related to an objection originally raised under A 100(a)/A 56, namely that it was not plausible that the technical problem had been solved over the entire breadth of the claims […]. No reasons were given for justifying the introduction of this objection in appeal proceedings under A 100(b) and/or for explaining why it could not have been submitted in an earlier stage of the proceedings.

[3] In its communication pursuant to Article 15(1) RPBA, the board – with reference to the function of an appeal proceedings as established in the case law (cf. “Case Law of the Boards of Appeal of the EPO”, 6^th edition 2010, VII.E.1, page 821) – questioned whether the appellant’s objection was admissible under A 100(b) and referred to the discretion conferred on the board by Article 12(4) RPBA. In reply to this communication, the appellant maintained the new objection under A 100(b) and referred to the case law in support of its admissibility. At the OPs before the board, the appellant referred to its written submissions and made no further submissions on this issue.

[4] The subject-matter of claim 1 is directed to a product, i.e. a nucleic acid molecule, defined by several structural elements which are either present or absent […]. The claim does not mention a technical effect or functional feature of said nucleic acid molecule. The board fails to see any technical problem or difficulty for a skilled person to achieve the defined nucleic acid molecule and there is no evidence on file to the contrary. According to decision G 1/03 [2.5.2] “... if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step ...”. Thus, as regards the subject-matter of claim 1, appellant’s objection is relevant only under the requirements of A 100(a)/A 56.

[5] The subject-matter of claim 13 is directed to a method of obtaining non-infectious, non-replicating, immunogenic HIV-like particles. It is required that the constitutive expression of the nucleic acid molecule of any of claims 1 to 10 (comprised in an expression vector of claims 11 or 12) in mammalian cells results in a stable production of these non-infectious, non-replicating, immunogenic HIV-like particles […].

Thus, in line with decision G 1/03 [2.5.2] which states that “... (i)f an effect is expressed in a claim, there is lack of sufficiency of disclosure ...”, the appellant’s objection as regards the subject-matter of claim 13 could be relevant under the requirements of A 100(b). However, in view of the late filing of this objection […] and of the prosecution history of the present case and, more importantly, of this particular objection during the first instance proceedings, the board, exercising its discretion under Article 12(4) RPBA, refrains to deal with this objection here and finds it more appropriate to consider it under the requirements of A 100(a)/A 56 […].

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

The file wrapper can be found here.

T 567/10 – Half A Loaf Is Better Than None

What can be done during appeal proceedings when a claim of the opposed patent lacks novelty but novelty is not a ground for opposition, and the patent proprietor objects to it being introduced?

The headnote of G 7/95 says that

“in a case where a patent has been opposed under A 100(a) on the ground that the claims lack an inventive step in view of documents cited in the notice of opposition, the ground of lack of novelty based upon A 52(1), A 54 is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee. However, the allegation that the claims lack novelty in view of the closest prior art document may be considered in the context of deciding upon the ground of lack of inventive step”.

This decision presents us with such a case.

Claim 1 as granted (and maintained by the Opposition Division) read:

A sealed package (1) for pourable food products, having at least one removable portion (4), and a closable opening device (2) in turn comprising a frame (5) defining a pour opening (6) and fixed to said package (1) about said removable portion (4), a cap (7) fitted to said frame (5) to close said pour opening (6) and movable to free the pour opening (6), and pull-off opening means (8) housed in said frame (5) and comprising a rigid plate (9) attached to said removable portion (4) and extractable from the frame (5), by pulling action, together with at least part of said removable portion (4); characterized by also comprising a pull-tab (16) of sheet material interposed between said removable portion (4) and said plate (9) and attached to both.

[1.2.1] All figures of D1 show an opening device 1 applied on a packaging container 2 of the type which is manufactured from a continuous laminated web material, with a core of paper or paperboard to which thermoplastic layers and possibly aluminium are laminated […].

[1.2.2] In […] D1 it is further stated that

“[o]n the upper side of the packaging container 2, a hole 3 or a hole indication has been made. This hole 3 or hole indication is normally covered from beneath by a thermoplastic strip for purposes of realising a liquid-tight package. At the same time, the outer side of the package is provided with a corresponding outer strip 4. Normally, these work stages are already carried out on production of the packaging material and the packaging material is delivered ready to the filling machines, provided with the above described hole 3 with each respective covering strip”.

[1.2.3] The above-mentioned passage of D1 defines that when the packaging material is delivered to the filling machines the hole 3 is already provided with an inner thermoplastic strip covering said hole 3 from the inside and with an outer strip 4 covering said hole 3 from the outside. This means that the two strips have to be fixed to each other so that when pull is exerted on the outer strip 4 in order to unseal the hole 3 said outer strip 4 detaches from the outside of the packaging material removing at the same time the thermoplastic strip covering the hole 3 on the inside. Otherwise an additional tearing action for the lower thermoplastic strip would be needed for freeing the hole 3, which is nowhere described in D1 and would not make any sense.

[1.2.4] The outer strip 4 further has a free unsealed portion 5 which is attached to the surface area 11 of the heel 10, see column 3, lines 8 to 11 and column 4, lines 10 to 30. Through this attachment the inner thermoplastic strip covering the hole 3 on the inside is connected via the free unsealed portion 5 and the outer strip 4 to the surface area 11 of the heel 10. In the closed stage shown in figure 9 the surface area 11 of the heel 10 is positioned within the space defined by the pouring element/frame 7.

In the nearly complete opening stage shown in figures 11 and 12 the heel 10 is extracted from the element/frame 7 with the main portion of the strip 4, obviously together with the main portion of the inner thermoplastic strip attached to it.

[1.2.5] Accordingly, D1 discloses in its embodiment shown in figures 8 to 12 (using the terminology of claim 1 of the patent in suit) a sealed package (packaging container 2 and opening arrangement 1) for pourable food products, having at least one removable portion (the thermoplastic strip covering the hole 3 from the inside), and a closable opening device (1) in turn comprising a frame (7) defining a pour opening and fixed to said package about said removable portion, a cap (9) fitted to said frame to close said pour opening and movable to free the pour opening, and pull-off opening means (10) housed in said frame and comprising a rigid plate (11) attached to said removable portion and extractable from the frame by pulling action, together with at least part of said removable portion, and also comprising a pull-tab (4,5) of sheet material interposed between said removable portion and said plate and attached to both.

[1.2.6] The Board cannot follow the [patent proprietor’s] arguments, that since

a) in claim 1 of the main request the pull-off opening means is listed as an element of the opening device in addition to the frame and the cap,

b) the whole disclosure of the patent in suit only refers to solutions having the pull-off opening means separate from the cap, and

c) the description does not contain any information hinting that the cap and the rigid plate of the pull-off opening means could be incorporated into one single structural element,

the person skilled in the art would not understand the subject-matter of claim 1 of the main request to be also encompassing a solution having the rigid plate as an integral part of the cap, for the following reasons.

[1.2.7] Neither claim 1 of the main request nor the description of the patent in suit excludes the pull-off opening means being part of the cap. Moreover, the fact that in claim 1 the pull-off opening means, the frame and the cap are listed as three distinct elements does not exclude that these elements may be interconnected with each other or even that they may be integral with each other. Only the specific embodiment depicted in the figures shows specific pull-off opening means 8 being non-integral with the cap. This, however, cannot have a limiting effect as far as it concerns the pull-off opening means claimed in claim 1.

[1.2.8] Since according to point [1.2.5] above the sealed package according to the embodiment of D1 shown in its figures 8 to 12 discloses all the features of the sealed package of claim 1, the sealed package according to claim 1 cannot involve an inventive step.

[1.2.9] The Board has to take recourse to the above unusual formulation since the original opposition was only based on the ground of opposition of lack of inventive step based on D1 with application of the teaching of D2 being obvious. In application of decision G 7/95 [7.2], the Board had to decide the question whether D1 is disclosing or not all the features of claim 1 as a question of inventive step, since the [patent proprietor] did not give its consent to the introduction of the ground of lack of novelty, raised by the [opponent] for the first time on appeal.

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

The file wrapper can be found here.

T 459/09 – Freeze! Or I’ll Shoot

To say it in patent language: as soon as you amend, your claims come under full A 84 scrutiny, even if you are only combining granted claims. There have been decisions of that kind in the past, but the present decision appears to be more reckless than what we have seen so far.

The patent proprietor filed an appeal against the decision of the Opposition Division (OD) to revoke the patent.

Before discussing the allowability of some requests admitted under Article 13 RPBA, the Board had to examine whether it was competent to examine the clarity of claims that only combined claims as granted.

[4.1.1] The appellant disputed that clarity issues could be dealt with in opposition appeal proceedings in cases such as the present one, in which the changes made to the claims of the main request and the first auxiliary request only consisted in the combination of claims 1 and 14 of the patent as granted.

In particular, the appellant argued that since the requirement of clarity was not a ground of opposition, none of the claims of a patent as granted could be attacked under A 84 with the notice of opposition. For this reason, non-compliance with A 84 could not be objected to either in later stages of the proceedings with respect to a combination of claims of the patent as granted.

[4.1.2] It is generally accepted that the list of grounds for opposition according to A 100 is exhaustive. This means that objections under A 84 cannot be raised against a granted patent even though they are manifest.

[4.1.3] The situation is different in case of the maintenance of a patent in amended form.

A 101(3) requires that if an OD (or a Board of appeal (A 111(1), second sentence, first alternative)) is of the opinion that, taking into consideration the amendments made by the proprietor of the European patent during opposition proceedings, “the patent and the invention to which it relates meet the requirements of the EPC”, it shall decide to maintain the patent as amended, provided that the conditions laid down in the Implementing Regulations are fulfilled. If the patent and the invention to which it relates do not meet the requirements of the EPC, it shall revoke the patent.

This Article apparently establishes a deviation from the framework of A 100 in that the power to examine a patent in amended form is not restricted to the grounds for opposition.

In decision G 9/91 [19], the Enlarged Board of Appeal confirmed that in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, «such amendments are to be fully examined as to their compatibility with the requirements of the EPC».

[4.1.4] However, according to the jurisprudence of the boards of appeal, there are limits to the competence accorded by A 101(3) as regards the examination of an amended patent.

For example, A 101(3) would not justify objections to be based upon A 84, if such objections did not arise out of the amendments made (see T 301/87 [headnote 1; 3.7]). Along this line, an objection of lack of clarity should not be raised for instance with respect to an unclear feature comprised in an independent claim of a patent as granted, if this claim is amended by way of addition of a new, clear feature, provided that both features are unrelated.

Boards of appeal have also perceived a limit in the particular case in which an independent claim of a granted patent is amended simply by combining it with an associated dependent claim.

In particular, in T 1855/07 [2], referring to existing jurisprudence (see T 367/96; T 301/87; T 472/88; T 362/02 (NB: this should read T 326/02); T 381/02), the board held that the power to examine clarity under A 84 failed when the amendment merely consisted in the literal inclusion of dependent claims into the associated independent claim of a patent as granted (“satzbauliche Eingliederung”). The board noted that the jurisprudence to which it referred made a distinction between substantial amendments, which under A 101(3) (A 102(3) EPC 1973) were to be fully examined as to their compatibility with the requirements of the EPC, and merely formal amendments arising from simple linguistic combinations of granted claims, for which the framework of A 100 applied.

[4.1.5] However, the jurisprudence of the boards of appeal comprises also examples in which combinations of claims of a granted patent were considered to constitute substantial amendments, which justified an examination under A 84.

In T 1459/05 [4.3] the board decided not to adopt the existing jurisprudence, according to which there was no power to examine matters of clarity under A 84 when the amendment consisted of a combination of claims as granted. The board found that an exception had to be made in the case before it because the assessment of the resulting claimed subject-matter decisively depended on the technical significance of the sole added feature in that any difference from the prior art could only be defined on the basis of that feature. However, its technical significance was so unclear for the skilled person that any such difference was not apparent or at least could not be identified with a reasonable degree of certainty. The board held that it had to be able to exercise its discretion and to deviate, exceptionally and on a case-by-case basis, from the practice of ruling out any power of examination under A 84 in the case of amendments consisting of a combination of claims as granted. In particular, such discretion had to be exercised where a strict application of the approach which excluded the raising of an objection on the grounds of lack of clarity would lead to a situation in which a further examination of the amended patent, e.g. in relation to novelty and inventive step, would be impeded or might not even lead to a meaningful result.

In T 1440/08 [4] the board also held that it had the power to examine an amendment under A 84 in line with other decisions of the existing jurisprudence (see T 472/88; T 420/00; T 681/00), in particular when the combination of granted claims led to an inconsistency between two features of the amended claim 1. Irrespective of the fact that the clarity problem had already affected the claims of the patent as granted, it was the change of perspective on the invention due to the amendment by which the clarity problem became apparent.

[4.1.6] In view of the foregoing, the present Board holds that clarity of an amended independent claim should, in principle, be examined, even if the amendment only consists in a mere literal combination of claims of the patent as granted. Any other approach would indeed entail the risk of unduly restricting the mandate for examination of an amended patent which A 101(3) imposes on an OD having to deal with an amended patent.

In fact, the wording of A 101(3) qualifies neither the nature nor the scope of the amendments. After amendment of any kind, the OD may no longer decide to reject the opposition, as would have been possible, had, for example, a clarity objection been raised as the sole ground for opposition. Instead, the OD may only decide either to maintain the patent in amended form or to revoke the patent. Their decision is taken on the basis of whether the patent and the invention to which it relates meet the requirements of the EPC. A 101(3) indeed defines in absolute terms that the requirements of the EPC shall be considered when amendments are made by the proprietor of the patent during opposition proceedings. Therefore, the term “amendments” in A 101(3) should not be construed narrowly and, irrespective of the manner in which the patent is modified, the amended patent should be subjected to an examination to ensure compliance with all requirements of the EPC. This approach is in agreement with G 9/91 […].

[4.1.7] In this context, the Board notes that an amendment consisting of the incorporation of a technically meaningful feature in an independent claim of a granted patent does indeed represent an attempt to overcome an objection within the framework of A 100 against the patent as granted, the amendment having to be occasioned by a ground for opposition (R 80). It follows that such an amendment is of a substantial nature and will normally have an effect on the substantive examination, such as for example on the assessment of novelty and inventive step.

In the Board’s opinion, any amendment that can be qualified as being of a substantial nature in the above sense would in principle justify an unrestricted exercise of the examination power derivable from A 101(3), irrespective of the kind of amendment performed. Specifically, it is immaterial whether the amendment arises from the combination of a feature from the description with an independent claim, or from the literal combination of claims of the granted patent.

The amended patent would thus normally be examined pursuant to A 101(3) so as to establish whether it meets all the requirements of the EPC. A deviation from this rule may, however, not be excluded in particular cases. This has to be judged on a case-by-case basis.

[4.1.8] In the present case, with regard to the appellant’s main request, first auxiliary request and third auxiliary request, the introduction of the additional feature of dependent claim 14 into claim 1 of the patent as granted highlights the significance of a specific technical concept, i.e. the capability of the interlaced antenna array for operation in three specific bands. This amendment is of a substantial nature.

In view of the foregoing, the Boards holds that it has the power to examine whether the amended patent meets the requirements of A 84 EPC 1973.

The Board has also provided headnotes:

I. An amendment consisting of the incorporation of a technically meaningful feature in an independent claim of a granted patent does indeed represent an attempt to overcome an objection within the framework of A 100 against the patent as granted, the amendment having to be occasioned by a ground for opposition (R 80). It follows that such an amendment is of a substantial nature and will normally have an effect on the substantive examination, such as for example on the assessment of novelty and inventive step.

II. Any amendment that can be qualified as being of a substantial nature in the above sense would in principle justify an unrestricted exercise of the examination power derivable from A 101(3), irrespective of the kind of amendment performed. Specifically, it is immaterial whether the amendment arises from the combination of a feature from the description with an independent claim, or from the literal combination of claims of the granted patent.

III. The amended patent would thus normally be examined pursuant to A 101(3) so as to establish whether it meets all the requirements of the EPC. A deviation from this rule may, however, not be excluded in particular cases. This has to be judged on a case-by-case basis (see [4.1.7]).

In my understanding, until now an A 84 assessment of mere combinations of granted claims was only accepted in exceptional cases, whereas the present decision turns the tables and tells us that only in exceptional cases such an assessment should not be carried out. 

Now that we have so clear a statement that appears to contradict earlier case law (possibly relegated to point III of the headnotes), perhaps would it be a good idea to ask the Enlarged Board to clarify the situation once and for all, for the sake of legal security.

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

The file wrapper can be found here.

T 1306/08 – Let Us Distinguish

[3.1] The respondent argued that A 100(c) had not been cited as a ground for opposition and, making reference to decision G 9/91, concluded that the board was not competent to examine whether or not the amendments are in accordance with the requirements of A 123(2).

The board wishes to emphasise that, in so far as subject-matter of the European patent extending beyond the content of the application as filed is concerned, a distinction has to be made between the ground for opposition according to A 100(c), which concerns amendments made in the pre-grant phase, and amendments made in the course of opposition or appeal proceedings.

Regarding the latter alternative, decision G 9/91 [19] notes:

“In order to avoid any misunderstanding, it should finally be confirmed that in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC (e.g. with regard to the provisions of A 123(2) and (3)).”

As the objections raised by the appellant concern subject-matter amended in the course of the opposition and appeal proceedings, the board concludes that it is competent to examine them.

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

The file wrapper can be found here.

T 1232/09 – Only By Reference

In this case the patent proprietor, who appears to have been frightened by recent Article 12(4) RPBA case law, sent the following letter to the Board.

The question arose whether this way of filing requests was alright.

[1.2] Regarding auxiliary requests 1 to 6, the [patent proprietor] declared on 5 August 2011 that these requests filed in the first-instance proceedings were “maintained in the appeal proceedings”.

With this declaration, the board considers that said requests were formally introduced into the appeal proceedings on 5 August 2011. The sole fact that they were submitted only by reference and not in written form cannot be seen as a serious ground for disregarding them during the appeal proceedings.

[1.3] The board therefore decides, in the exercise of its discretion under Articles 13(1) and (3) RPBA, to admit auxiliary requests 1 to 6 […] into the appeal proceedings.

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

The file wrapper can be found here.

T 1592/09 – Because It’s There

This is an appeal of the opponent after the patent had been maintained in amended form by the Opposition Division (OD).

In what follows, the Board discusses the question of whether the ground of insufficiency of disclosure was already in the proceedings.

*** Translation of the German original ***

[2.1] In the present case the objection of the opponent regarding insufficient diclosure was discussed by both parties several times during the proceedings before the OD (see the minutes of the oral proceedings […]).

[2.2] In its decision G 10/91 [16] the Enlarged Board of appeal has acknowledged that an OD may, in application of A 114(1), examine a belated ground for opposition that is not covered by the notice of opposition. However, this examination requires that, in a first step, the OD, of its own motion [or] upon request by the opponent or a third party, admits and thus introduces the ground for opposition into the opposition proceedings, in conformity with the criteria for relevance given in G 10/91 [16]. If this has happened, the OD will, in a second step, carry out the examination and thus “of course decide whether such ground of opposition prejudices the maintenance of the opposed patent”, see G 1/95 [5.2].

[2.3] The minutes of the [oral] proceedings and the impugned decision do not contain any explicit statement in respect of whether the late filed ground for opposition of insufficient disclosure was admitted and thus introduced into the proceedings or not. In such a situation the introduction of this ground for opposition can result from the fact that the reasons for the decision contain substantiated statements regarding that matter.

[2.4] In point 3.3 of its decision the OD refers, in an unambiguous and sufficient way, to the legal and factual framework of the ground for opposition according to which the skilled person can “can carry out” (thereby implicitly mentioning [the German version of] A 100(b)) a waterstop device according to claim 1 having the claimed features (claims 1 and 4 as granted) without exercising any inventive activity and that in this context “the proportions … can be adapted … by the skilled person … by trial and error” (i.e. the submission of facts and evidence for justifying the enablement).

It is irrelevant in this context whether, as argued by the [patent proprietor], the treatment of enablement was carried out under the heading “Inventive step”, because an appealable decision is defined by the substance of its content and not by its form.

[2.5] Thus the Board comes to the conclusion that the ground for opposition under A 100 (b) already was in the proceedings. Therefore, the examination of this ground for opposition by the Board does not constitute a “fresh” ground within the meaning of the opinion G 10/91 of the Enlarged Board of appeal, cf. G 1/95 [5.3]).

[2.6] Moreover, in the present case it implicitly follows from the examination of the belated ground for opposition in point 3.3 of the decision on the opposition that [the OD] apparently had been found to be prima facie sufficiently relevant and, therefore, had been – rightly –admitted and introduced into the proceedings beforehand, in compliance with the criteria for relevance [defined] in G 10/91 [16].

The fact that the margin of discretion of the OD for admitting and introducing belated grounds for opposition apparently was applied in a correct way in the present case was not discussed, let alone challenged, by the [patent proprietor] during the appeal proceedings. It only had discussed whether the ground for opposition of insufficient disclosure indeed was part of the decision of the OD and, therefore, of the proceedings.

Also, the statements of the parties on insufficiency of disclosure, as recorded in the minutes of the [oral] proceedings before the OD held on March 20, 2009, do not contain any hint that the introduction of this ground for opposition – in contrast to the introduction of new documents, see point 3.8 of the minutes – was disputed by the [patent proprietor] but had nevertheless – perhaps wrongly – taken place when the decision on the opposition was made. Point 5.7 of the minutes only contains a neutral statement of the [patent proprietor] according to which “insufficiency of disclosure was to be considered as a late filed ground for opposition”. During the [oral] proceedings before the Board the [patent proprietor] had another opportunity of commenting this issue.

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

The file wrapper can be found here.

T 226/09 – Anticipation

Both the patent proprietor and the opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form, on the basis of the second auxiliary request on file.

In its notice of appeal, the patent proprietor requested maintenance of the patent on the basis of what had been the first auxiliary request before the OD. In its statement of grounds of appeal, the patent proprietor then requested as main request that the opposition be rejected.

Did the Board admit this request?

*** Translation of the German original ***

[1] The wording of the provision corresponding to former R 64 EPC 1973 and present R 99 was modified when the EPC 2000 entered into force. In particular, [the legislator] inserted the requirement that the notice of appeal had to contain a request defining the subject of the appeal into R 99(1)(c). [He] also added to paragraph 2 that the statement of grounds of appeal had to indicate the extent to which the impugned decision was to be amended.

[1.1] In the present case the patent proprietor, when filing the notice of appeal, requested that the decision be set aside and that the patent be maintained according to the first auxiliary request. The statement of grounds of appeal explained why the reason should be set aside and also contained a request extending beyond [the original request], according to which the opposition should be rejected, i.e. the patent be maintained as granted.

[1.2] The opponent was of the opinion that this [course of action] had limited the subject of the appeal to the first auxiliary request and that, as a consequence, the main request was not part of the appeal proceedings. It justified this opinion by invoking the amended wording of R 99 according to which the subject of the appeal was to be defined in the notice of appeal. The Board cannot endorse this opinion.

[1.3] According to the case law of the Boards of appeal, the modified wording of R 99 has not resulted in a substantive revision (inhaltliche Neuregelung) of the requirements for the notice of appeal and the statement of grounds of appeal (T 358/08 analysing in detail the travaux préparatoires, T 689/09, T 9/08).

This means that the requirements of R 99(1)(c) are satisfied when the notice of appeal requests that the impugned decision be set aside. The extent of the request (Änderungsbegehren), i.e. in which version the patent proprietor filing the appeal wants the patent to be maintained, is only to be indicated in the statement of grounds of appeal under R 99(2) (see in particular T 358/08 [5]).  

[1.4] What exactly is the subject of the appeal always has to be seen in the context of the subject of the impugned decision. If a decision has several subjects then it is possible that the appellant does not wish to contest all of these subjects. Therefore, it can file an appeal against the decision in its entirety or against parts of the decision only. This corresponds to the principle of party disposition (Antragsgrundsatz; G 1/99 [6.2]). However, these parts have to be independent of each other. In this context the initial (einleitend) request of the appellant determines the subject of the appeal and thereby fixes the framework of the appeal proceedings (G 4/93 [1]). Thus the subject of the appeal proceedings is to be determined on the basis of the declarations in the notice of appeal.

[1.5] In the notice of appeal [the patent proprietor] first requested to set aside the interlocutory decision. The purpose of this declaration is to invalidate the impugned decision insofar as it adversely affects [the appellant]. The operative part (Tenor) of the impugned decision was that, taking into account the amendments, based on the second auxiliary request, the patent and the invention that it discloses satisfy the requirements of the Convention. The reasons for the decision explain that A 100(b) was in conflict with claim 1 of the main request and that claim 1 of the first auxiliary request violated A 123(2). These statements are not independent subjects of the decision. Rather, the subject of the decision is the patent, as can also be seen from the operative part [of the decision].

[1.6] According to decision T 689/09, which deals with R 99(1)(c), the declaration “hereby we file an appeal” defines the subject of the appeal to the extent that the legal effects resulting from the decision are to be cancelled. The question as to how the decision is to be modified, however, is left to the statement of grounds of appeal […].

[1.7] In decision T 358/08 the Board came to the same conclusion. It further explained that the sole purpose of the requirement of R 99(1)(c) to define the subject of the appeal was to clarify whether the decision was contested in its entirety or only in part (point [5] of the reasons).

[1.8] However, a decision can only be contested in part if there are parts of the decision that can be contested independently. For instance, this was the case in decision T 420/03 where the OD had revoked the patent and also had ordered apportionment of costs under A 104. The Board of appeal explained that the decision concerned two legally distinct subjects. If the appellant declared in its notice of appeal “hereby we file an appeal” and then only referred to the first part concerning the revocation, then the second part, i.e. apportionment of costs, was not encompassed by the appeal (point [1.2] of the decision).

[1.9] In the present case there are no such legally distinct parts but only a unitary decision on the maintenance of the patent. [The patent proprietor] filed an appeal against this decision. This defines the subject of the appeal. To which extent [the appellant] wishes the impugned decision to be modified, i.e. in which version the patent is to be maintained, only has to be stated in the statement of grounds of appeal. If, however, this indication is already given in the notice of appeal, this only constitutes an anticipation of the statement of grounds that has no limiting effect (T 89/85 [2]).

[1.10] Consequently the request contained in the notice of appeal, i.e. to maintain the patent on the basis of the first auxiliary request, did not limit the patent proprietor and did not hinder [the appellant to file] a more far-reaching request together with the statement of grounds of appeal.

[1.11] As a consequence, the main request is part of the proceedings.

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

The file wrapper can be found here.

T 630/09 – Combination Locked

The question of whether an amendment consisting in combining granted claims can possibly give rise to an objectionable lack of clarity is disputed between the Boards. Here is one more decision in favour of the approach according to which clarity is not to be examined in this context.

The patent proprietors filed an appeal against the decision of the Opposition Division to revoke their patent.

During the oral proceedings before the Board, the patent proprietors withdrew all requests on file and filed one new request.

Here is what the Board had to say on the scope of examination:

*** Translation of the German original ***

[3] The present request is based on a combination of granted claims: claim 1 combines granted claims 1 and 11, dependent claims 2 to 8 are the same as in the patent as granted. As [the amendment] only corresponds to a syntactical redrafting of the claims, which does not lead to any substantial modification, there is, according to the established case law of the Boards of appeal, no reason to [raise] any new objection beyond A 100 EPC 1973 (see, for instance, T 367/96 [6.2], T 381/02 [2.3.7], T 1855/07 [2.2-4]).

Therefore, in the present case, in application of decisions G 9/91 and G 10/91, all that has to be examined in the appeal proceedings is whether one of the grounds of opposition raised in the opposition makes it impossible to maintain the patent.

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

The file wrapper can be found here.