T 414/12 – ¡No pasarán!

In this case Board 3.2.04 came to the conclusion that the claimed electronic gaming apparatus did not involve an inventive step. The applicant requested the following questions to be referred to the Enlarged Board of appeal (EBA):

1. When a claim relating to an electronic gaming apparatus defines as an integer a game rule which provides a further technical effect (which may be known) in the sense of decision T 1173/97, which technical effect is an inherent result of implementing the rule in the apparatus, should that integer be taken into account in assessing inventive step?

2. If the answer to Question 1 is positive, would the answer be different if there is also, as a result of the rule, a nontechnical or cognitive effect on a person playing a game on the apparatus?

3. If the answer to Question 2 is negative, would the answer be different if the application presents the nontechnical or cognitive effect as the, or one of the purposes of the invention?

The Board dismissed this request:

[4] A 112 provides for the possibility of referring questions of law to the EBA “in order to ensure uniform application of the law or if a point of law of fundamental importance arises” (paragraph (1)).

In the present case the [applicant] has asked for referral of questions concerning the particular approach to be adopted by the Boards in considering how to assess inventive step in regard of electronic gaming apparatus that implements a game rule providing a further technical effect.

The approach adopted by the present Board […] builds upon existing case law regarding implementation of game rules, which in turn is based upon various decisions of the Boards concerning the assessment of inventive step for “mixed” inventions involving computer programmes which are per se excluded from patentability under the same provision as rules and methods for playing games, A 52(2)(c). The decisions and their underlying approaches have become well-established case law and are consistently and uniformly followed by the Boards. Most recently the EBA in G 3/08 [7] held these decisions to constitute a “legitimate development of case law” and that there was no divergence between them. Nor has the [applicant] provided any compelling evidence that this might not be so.

Moreover, the particular questions raised by the [applicant] are specific to a very limited field of subject-matter and – in contrast to, say, the questions addressed in G 3/08 relating to computer implemented inventions – are of small relevance outside that field. In the Board’s estimation the questions posed are therefore also not of fundamental importance.

Finally, the differing results arrived at by the [applicant] and the Board in assessing inventive step of the claimed invention appear not to be the result of differing views as to whether further technical effects inherent in the implementation of a game rule should be taken into account when assessing inventive step (to which the questions pertain), but rather lie in differing assessments as to what aspects of the claim are technical and what aspects are non-technical game rules as such. The questions posed have in essence been answered by the Board, thus an answer from the EBA is not necessary for reaching a decision on the appeal in hand (A 112(1)a EPC, first sentence).

In the light of the above, the Board concludes that there is no justification for referring the questions posed to the EBA.

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

The file wrapper can be found here.

T 83/05 – Broccoli Forever!

EBA member Fiona suddenly felt that a broccoli would cast a shadow on her holidays

The present case was the one who gave rise to the “Broccoli” decision G 2/07 of the EBA of appeal (EBA) on how the expression “essentially biological” was to be understood.

When summoned to oral proceedings (OPs), the patent proprietor replaced all its requests on file. The new requests did not contain method claims. Claim 1 of the main request read:

1. An edible Brassica plant produced according to a method for the production of Brassica oleracea with elevated levels of 4-methylsulfinylbutyl glucosinolates, or 3-methylsulfinylpropyl glucosinolates, or both, which comprises:

a) crossing wild Brassica oleracea species selected from the group consisting of Brassica villosa and Brassica drepanensis with broccoli double haploid breeding lines;

b) selecting hybrids with levels of 4-methylsulfinylbutyl glucosinolates, or 3-methylsulfinylpropyl glucosinolates, or both, elevated above that initially found in broccoli double haploid breeding lines;

c) backcrossing and selecting plants with the genetic combination encoding the expression of elevated levels of 4-methylsulfinylbutyl glucosinolates, or 3-methylsulfinylpropyl glucosinolates, or both; and

d) selecting a broccoli line with elevated levels of 4-methylsulfinylbutyl glucosinolates, or 3- methylsulfinylpropyl glucosinlates [sic], or both, capable of causing a strong induction of phase II enzymes, wherein molecular markers are used in steps (b) and (c) to select hybrids with genetic combination encoding expression of elevated levels of 4-methylsulfinylbutyl glucosinolates, or 3-methylsulfinylpropyl glucosinolates, or both, capable of causing a strong induction of phase II enzymes.

On November 8, 2011, second OPs took place in the “Tomato” case T 1242/06. While, similarly to the present case, the patent proprietor in case T 1242/06 also took the EBA decision into account by deleting all process claims, the opponent nevertheless maintained that the proprietor’s requests, which now only contained product claims, still did not comply with the requirements of A 53(b). This led to another referral to the EBA.

Third-party observations were received in the present case on November 1, 2011.

One of the opponents asked the Board to stay the proceedings in order to wait for the questions to be referred to the EBA and whether the EBA would “accept” them.

The patent proprietor then pointed out that the new submission of the opponent seemed to introduce a fresh ground of opposition into the appeal proceedings, i.e. an objection under A 53(b) against product claims. If the EBA should find that the second referral in case T 1242/06 inadmissible, the patent proprietor would oppose the admission of this new ground into the proceedings. Otherwise, however, it would agree to it.

On May 31, 2012, the board in case T 1242/06 handed down a second interlocutory decision in which it referred the following questions of law to the EBA:

1. Can the exclusion of essentially biological processes for the production of plants in A 53(b) have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit?

2. In particular, is a claim directed to plants or plant material other than a plant variety allowable even if the only method available at the filing date for generating the claimed subjectmatter is an essentially biological process for the production of plants disclosed in the patent application?

3. Is it of relevance in the context of questions 1 and 2 that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded as such under A 53(b)?

The referral is pending as case G 2/12.

When invited to clarify its requests, the patent proprietor gave its unconditional consent to the examination of the objection raised under A 53(b) against the product claims of its requests. It requested that this objection be admitted into the proceedings and that the board refer anew questions of law to the EBA, some of which were identical to those asked in case G 2/12.

After some hesitation, the Board decided to admit the new objection under A 53(b) and then pursued:

A 53(b) – substantive aspects

[13] In the area of plant breeding, A 53(b) provides for two exceptions from patentability. It prohibits the patenting of, on the one hand, plant varieties and, on the other hand, essentially biological processes for the production of plants.

[14] In the second interlocutory decision in case T 1242/06 the present board, in a different composition, considered both of these exceptions when assessing the patentability of product claims directed to certain tomato fruits. While the board found the exclusion of plant varieties not to be applicable, it considered that the process exclusion in A 53(b) might well have an impact on the allowability of the claimed products and decided to refer further questions of law concerning this latter issue to the EBA.

[15] In the present case, the subject-matter of claim 1 of the [patent proprietor’s] main request […] is defined as an edible Brassica plant produced according to a certain method for the production of Brassica oleracea with elevated levels of certain glucosinolates. The method features of this product-by-process claim include steps of crossing and selecting plants. Claims 2 and 3 which are directed to an edible portion and the seed of a broccoli plant contain identical method features. Claims 4 and 5 of the main request […] define the claimed broccoli plant or inflorescence inter alia by the product-by-process feature of crossing broccoli double haploid breeding lines with Brassica villosa or Brassica drepanensis.

[16] For the same reasons as set out in great detail in the second interlocutory decision in case T 1242/06 [25-39], the board considers that the plants or parts of plants claimed in the present case do not fall under the exclusion of plant varieties as stipulated in A 53(b) and defined by R 26(4). Apart from the fact that these plants and parts of plants are, in view of the process features of the claims […], defined as the result of crossing specific plant species, they are not further defined by a multitude of characteristics resulting from a given genotype or combination of genotypes (see decision G 1/98 [3.1]), but, directly or indirectly, only by a particular trait, i.e. an increased level of specific glucosinolates. A single trait is, however, in general not sufficient to define a plant variety without providing, apart from an indication of the species, further adequate information about the actual genotype of the plant grouping. The exclusion of plant varieties does therefore not apply in the present case. None of the [opponents] has argued otherwise.

[17] There is nevertheless, similarly to case T 1242/06, a second issue which needs to be addressed, namely the question as to whether the process exclusion contained in A 53(b) has a negative impact on the allowability of the [patent proprietor’s] product claims. In the board’s view, at least the method steps referred to in claims 1 to 3 of the main request for the definition of the claimed plants and plant parts […] have to be regarded as essentially biological processes for the production of plants and would fall, if claimed as such, under the process exclusion of A 53(b). These claims therefore cover plants and plants parts which are produced by an excluded process. The board is fully aware that according to the established case law the subject-matter of a product-by-process claim is not limited to products actually produced by the relevant process but also extends to products which are structurally identical to such products and which are produced by a different process (see decisions G 1/98 [4]; T 219/83 [10]). However, neither the patent application as originally filed nor the patent appears to disclose any method for the production of the claimed plants and plants parts which does not include steps of crossing and selection.

[18] In view of the principle of absolute product protection (see decision G 2/88 [5]), a claim to a product provides the patent proprietor with protection that generally encompasses the protection provided by a patent claim for the process of making the product (see decision G 2/06 [25]). If the product claims were allowed in the present case, any act of making the claimed Brassica and broccoli plants or plant parts would in principle fall under the prerogative of the patent proprietor. This would have the consequence that the proprietor could prevent others from carrying out the breeding method taught in the description of the patent and referred to in the claims, although this method might be regarded as an essentially biological process for the production of plants and excluded per se from patentability under A 53(b).

[19] When confronted with a similar situation in case T 1242/06, this board in a different composition expressed serious concerns about the allowability of product claims directed to plant material obtained by means of an essentially biological breeding process. It considered that such claims might de facto frustrate the legislator’s intentions in framing the process exclusion and make the circumvention of the exclusion in many cases a matter of skilful claim drafting, thereby diminishing the consistency and persuasiveness of the legislative framework of the EPC as regards patentable subject-matter. In view of these concerns, the board considered it necessary to refer further questions of law to the EBA.

[20] The board in its present composition fully endorses the detailed analysis of the relevant issues in the second referral decision in case T 1242/06. Points [40] to [66] of the reasons of that decision are therefore expressly incorporated into the present decision and form part of it. The board is aware of the comments made by the President of the EPO and by several amici curiae in the pending referral G 2/12. However, since none of the parties in the present proceedings has relied on these comments in detail or requested that they be considered at this stage, i.e. in the context of a further referral decision, the board believes it neither necessary nor appropriate to expand on the analysis above.

Referral under A 112(1)

[21] The answer to the above question as to whether the process exclusion contained in A 53(b) has a negative impact on the allowability of the [patent proprietor’s] product claims is decisive for the present appeal. It would be clearly inappropriate for the board to decide this issue on its own before the EBA has responded to the referred questions in case G 2/12. The board can therefore either stay the proceedings or refer again questions of law to the EBA. In view of the following considerations the board opts for the second alternative.

[22] All the parties explicitly requested a further referral. Such a referral will provide them with the opportunity to address the EBA on a very important legal issue which is decisive for the outcome of the present case. They may thus put forward their own arguments and emphasise supplementary aspects, thereby enriching the basis on which the EBA will take its decision. Furthermore, in view of the [patent proprietor’s] pending claim requests, the present case contains relevant additional aspects which can be integrated into the referral by formulating supplementary questions of law (see points [24] to [28] below). Finally, recent developments in case T 1242/06 and in the pending referral G 2/12, i.e. the withdrawal of its opposition by [the opponent] and the repeated requests by the proprietor for termination of the proceedings, raise the possibility that that case may end without a decision on the merits. This strongly speaks against a stay of the proceedings in the present case.

[23] All the parties were of the opinion that the same questions as were referred in the second interlocutory decision in case T 1242/06 should be reiterated in the present referral decision. The board agrees in principle. It considers that, for the reasons set out above […], an answer to these questions is required according to A 112(1). A slight modification of question 1 is, however, necessary in order to reflect the fact that in the present case the proprietor’s claims are directed to plants and certain plant parts (seed, edible portion, inflorescence) but not to fruits.

[24] The parties have furthermore requested the referral of additional questions of law in order to allow the EBA to address the decisive issue in a comprehensive manner. In the board’s view, the present case does indeed present additional aspects which should be taken into account in formulating the questions to be referred. However, this does not mean that all the additional questions proposed by parties can or need to be referred to the EBA under A 112(1).

[25] Two of the questions proposed by the parties […] address the issue that all the [patent proprietor’s] claims define the products by process features. This circumstance can be of importance when answering the question whether and to what extent the process exclusion in A 53(b) has a negative impact on the allowability of product claims. The board therefore considers it appropriate to incorporate the issue into question 2 of the present referral.

[26] Question 4 filed by the [patent proprietor] […] raises the further issue of the possibility of a specific kind of disclaimer should the process exclusion affect the allowability of product claims. This issue is of importance in the context of the claims of the [patent proprietor’s] auxiliary request I, which all contain disclaimer clauses such as “wherein the claim does not encompass an essentially biological process for producing [the plant, the portion of a plant, the seed of the plant or the inflorescence]”.

[27] The board does not understand the disclaimer clauses in the [patent proprietor’s] auxiliary request I as intended to be a usual disclaimer, i.e. to exclude part of the subject-matter defined in the claim (see the definition provided in decision G 1/03 [2]. The wording of the clauses indicates that the [patent proprietor] does not intend to disclaim all plants or plant parts that are produced by an essentially biological process. Rather the [patent proprietor] appears to seek to waive a part of the prerogatives of the owner of a product patent which encompass the right to prohibit others from producing the claimed product in any manner. The possible effect of the [patent proprietor’s] proposed disclaimer is that producing the claimed product by an essentially biological process could no longer be prohibited.

[28] It is doubtful whether European patent law allows such a disclaimer or waiver. The board is not aware of case law dealing with this specific issue. When the EBA considered possible conflicts between the requirements of A 123(2) and (3) in its decision G 1/93, it considered that there was no basis for the so-called “footnote solution” which had been used in German case law and consisted in a statement that an undisclosed feature remaining in the claim represented an inadmissible extension from which no rights could be derived (see point [6] of the reasons). The provisions of the EPC did not envisage or allow a statement to be included in the description of a particular patent, qualifying the rights which may be derived from the presence of a particular technical feature in a claim of that patent. These conclusions, albeit made in a context different from the present one, might be interpreted as pointing to a general unallowability of disclaimers or waivers of rights derived from a European patent. The board nevertheless sees some justification in the [patent proprietor’s] argument that the proposed disclaimer/waiver could solve the conflict between the patentability of plants (other than plant varieties) and the exclusion of essentially biological processes for the production of plants. The board has therefore decided to formulate a corresponding question of law in the present referral.

[29] None of the other questions proposed by the parties will be referred to the EBA. […]

The following questions are referred to the EBA for decision:

1. Can the exclusion of essentially biological processes for the production of plants in A 53(b) have a negative effect on the allowability of a product claim directed to plants or plant material such as plant parts?

2. In particular:

(a) Is a product-by-process claim directed to plants or plant material other than a plant variety allowable if its process features define an essentially biological process for the production of plants?

(b) Is a claim directed to plants or plant material other than a plant variety allowable even if the only method available at the filing date for generating the claimed subject-matter is an essentially biological process for the production of plants disclosed in the patent application?

3. Is it of relevance in the context of questions 1 and 2 that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded as such under A 53(b)?

4. If a claim directed to plants or plant material other than a plant variety is considered not allowable because the plant product claim encompasses the generation of the claimed product by means of a process excluded from patentability under A 53(b), is it possible to waive the protection for such generation by “disclaiming” the excluded process?

NB: This referral is pending as G 2/13.

You can download the whole decision here or consult the file wrapper here.

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

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

Claim 1 of the main request before the Board read:

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

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

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

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

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

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

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

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

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

[2.1] The feature of claim 1

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

The Board refused to refer the questions to the EBA:

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

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

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

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

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

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

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

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

The file wrapper can be found here.

T 1700/11 – Zero Discretion

This is an appeal by the patent proprietor against the maintenance of the opposed patent in amended form.

The representative of the opponent had filed the opposition on October 14, 2008, in the name of Henniges Automotive Sealing Systems North America Inc. He did not file an authorisation.

During the opposition proceedings, the patent proprietor contested the legal existence of the opponent and the validity of the authorisation of the representative. It referred to other proceedings before the EPO and the German Bundespatentgericht where oppositions filed in the name of GDX Automotive North America Inc. (the former name of the Henniges company) had been rejected as inadmissible.

The Opposition Division (OD) did not see any reason to doubt that the representative was authorised; examining authorisations was not among the duties of an OD. There was no need for adding a legally competent member to the OD because the legal situation was straightforward.

The patent proprietor filed an appeal and inter alia requested the Board to reject the opposition as inadmissible and to order apportionment of costs.

It did all it could to hinder the opponent from having the opposition declared not to have been filed, but it was not successful.

As the Board goes to some detail (which, for reasons unknown to me, appears to occur more often in German-language cases), the decision is rather lengthy. If you content yourself with the headnote, here is a translation:

If a European representative files an opposition in the name of a party and does not file a signed authorisation in due time after having been invited to do so by the Board of appeal, then the opposition is deemed not to have been filed (R 152(1)(6)).

This legal fiction entails a loss of rights (R 112(1)); an examination of the admissibility of the opposition which, from a legal point of view – fictitiously – has not occurred, is out of the question.

For those who want it all, please read on:

*** Translation of the German original ***

[2] Pursuant to R 152(6) the procedural steps taken by the representative of the [opponent] are deemed not to have been taken.

The [opponent] has not filed an authorisation for its professional representative within the four-month time limit set in the communication of the Board of appeal dated March 8, 2012.

[3] Generally speaking, the Board of appeal is entitled to order of its own motion that an authorisation be filed within a given time limit, because the Board has to examine, at any stage of the proceedings and of its own motion, whether a procedural situation (Prozessverhältnis) is duly justified. However, this duty to examine is limited by R 152(1) in connection with the “Decision of the President of the EPO dated 12 July 2007” (OJ EPO, Special edition 3/2007, p. 128) because professional representatives are not required to file authorisations. This waiver comes to an end when the EPO, in particular cases, requires [the representative] to produce an authorisation pursuant to Article 1(3) of the Decision of the President. The Board has exercised this power its communication dated March 8, 2012.

The “Decision of the President of the EPO dated 12 July 2007” is also binding on the Boards of appeal. The provisions established by means of this Decision qualify as law (haben Rechtsnormcharakter). The President was empowered, by means of direct legal delegation through R 152(1), to issue this Decision in is quality as legislative authority (Rechtssetzungsorgan). R 152(1) transfers, to a limited extent, the competence of the Administrative Council under A 33(1)(c) to amend the Implementing Regulations to the President of the EPO (regarding the quality of law of a Decision of the EPO, see T 991/04 [20]). Thus the issuing of this Decision is not a “necessary step” within the meaning of A 10(2)(a) but part of the EPC within the meaning of A 23(3). The “Decision of the President of the EPO dated 12 July 2007”does not concern matters governed by the RPBA. Moreover, Article 1(3) of this Decision fully ensures the independence of the Boards of appeal in the conduct of the proceedings.

[4] As the four-month time limit set in the communication dated March 8, 2012, has expired without any result, the opposition filed by the professional representative is deemed not to have been filed. This legal fiction that the opposition has not been filed has become effective ex tunc, at the time when the opposition was filed, as soon as the time limit expired on July 18, 2012, and generated a loss of rights within the meaning of R 112(1) for the opponent.

The Board is of the opinion that in the present case, for the sake of of procedural clarity, [the Board] has to decide on the loss of rights even though the [opponent] has not filed a request pursuant to R 112(2), first sentence. At the present stage of the proceedings, the mere communication concerning the legal fiction that the opposition had not been filed, could create doubt as to whether the patent was maintained unamended, because the OD had maintained the patent in amended form. Therefore, the order (Tenor) of the present decision is better suited to clarify the procedural situation than a mere communication of loss of rights.

[5] The impugned decision is based on incorrect procedural assumptions and, as a consequence, erroneously assumes that a legally effective opposition had been filed in due time. The objective incorrectness of the decision is not obviated by the fact that it was only the Board that ordered that an authorisation be produced. All the Board has to do is to review the correctness of the impugned decision based on the procedural facts that are now available. The decision contradicts the legal consequences stipulated in R 152(6) and is legally deficient. Thus the impugned decision had to be set aside and it had to be declared that the opposition was deemed not to have been filed.

Dismissal of the request to declare the opposition inadmissible

[6] As a consequence of the legal fiction that the opposition filed by the professional representative shall be deemed not to have been filed […] there is no legal basis for declaring that the opposition was inadmissible.

[7] The [patent proprietor] submitted that R 152(6) had to be interpreted narrowly and that the opposition […] had to be dismissed as inadmissible.

It would only be possible to base such an opinion on R 152(6) if the legal consequence ordered therein (that the procedural steps taken had to be deemed not to have been taken) were “pushed aside” (“verdrängt”) by means of legal consequences established by other provisions. In the case of the present opposition, this would mean that the legal fiction pursuant to R 152(2) according to which the opposition was deemed not to have been filed, was ineffective because the opposition had to be rejected as inadmissible under R 77(2). Thus the legal consequence provided in R 77(2) concerning the inadmissibility of the opposition had to completely replace the legal consequence provided in R 152(6). Then R 77 would be a lex specialis with respect to R 152(6).

[8] Similar legal considerations are found in the reasons for decision T 126/04. This decision postulates precedence of the provisions regarding the inadmissibility of an appeal over the legal fiction under A 14(5) EPC 1973 that a translation is deemed not to have been received. As the notice of appeal had only been filed in a privileged language but not in one of the official languages within the applicable time limit, the Board came to the conclusion that, in view of the special nature (Spezialität) of the provisions regarding the admissibility of the appeal, the legal consequence provided in A 14(5) EPC 1973 – according to which the [translation] is deemed not to have been filed – was not applicable.

In its legal assessment this decision expressly deviates from the reasons for decisions T 193/87 and T 323/87 and did not endorse the opinion expressed therein, that when (as a consequence of a legal fiction) there is no opposition, an examination of the admissibility of the opposition under R 56(1) EPC 1973 does not come into question.

[9] The Board of appeal is of the opinion that R 152(6), which is to be applied in the present case, does not establish a legal basis for a narrow interpretation within the meaning of decision T 126/04. The wording of R 152(6) is unambiguous and the use of the expression “without prejudice to” clearly establishes that other provisions may provide further legal consequences but are not intended to replace the legal consequence stipulated in R 152(6).

If this was intended, then the legislator would have had to use a wording such as “subject to” (“vorbehaltlich”).

With the reference to further legal consequences in R 152(6) the legislator wanted to make clear that the legal fiction consisting in that a procedural step was deemed not to have been taken does not exclude further consequences concerning the proceedings under consideration, which is illustrated by means of examples in what follows.

If a professional representative who has no authorisation files a statement of grounds of appeal, then, as soon as the time limit under R 152(6) has expired, the statement is deemed not to have been filed. However, this legal consequence is not intended to exclude that the appeal is dismissed as inadmissible because, according to the legal fiction the statement of grounds of appeal has not been filed.

Also, a request for examination filed pursuant to A 94 by a professional representative who acted without being authorised can have the legal consequence that, in addition to the legal fiction under R 152(6), the application as a whole is deemed to have been withdrawn.

[10] Therefore, the legal fiction pursuant to R 152(6) that the procedural step is deemed not to have been taken, precisely acts as the legal prerequisite that further legal consequences may be declared without any further examination of whether at the moment when the representative acted there was a substantive client-attorney relationship (materiellrechtliches Vertretungsverhältnis). The legislator has deliberately chosen this legal construction – as he has done in other provisions where the legal consequence of deeming acts not to have been taken is stipulated – in order to make it possible to speedily terminate the proceedings for the sake of procedural economy.

The piece of evidence “power of attorney certificate” (“Vollmachtsurkunde”) can only attest of an existing client-attorney relationship, but the fact that it is not filed does not necessarily exclude that there was an effective client-attorney relationship before; it can only serve as an indication that there was no authorisation ab initio. Without the fiction stipulated in R 152(6), the Board would have to clarify of its own motion the procedural fact (Prozesstatsache) that the authorisation for filing an opposition was missing. As a matter of fact, a European representative could have been instructed to take a procedural step although he had not filed (or was unable to file) a power of attorney certificate. Then the procedural step would be legally effective. The fiction of R 152(6) is needed [for the Board] to be able to treat the procedural step as legally ineffective when no power of attorney certificate is filed upon request.

Thus in the present case the opposition filed on October 14, 2008, is legally deemed not to have been filed ab initio, irrespective of whether the representative of the opponent was (at first) authorised, or not.

When, from a legal point of view, there is no opposition, then there is no room for examining the admissibility of the (legally inexistent) opposition under R 77(2).

A direct application of R 77(2) in view of the failure to submit a power of attorney certificate is out of the question because the examination of the power of attorney certificate for the European representative is not part of the examination as to admissibility under R 77. As Article 1(1) of the “Decision of the President of the EPO dated 12 July 2007” does not provide for an examination of the authorisation, the filing of the certificate cannot be a prerequisite for admissibility within the meaning of R 77(2).

Nor can the Board endorse the argumentation of the [patent proprietor] according to which the failure to file a power of attorney certificate has to have the same legal consequence as the failure to correct another deficiency within the meaning of R 77(2) in connection with R 76. As already explained, the fiction that the opposition is deemed not to have been filed allows [the Board] not to examine whether, at the time of filing of the opposition, there actually was no effective authorisation and the latter was withdrawn only at a later stage. The failure to provide the address of the opponent, which the [patent proprietor] cited as a remediable deficiency, does not raise corresponding questions of procedural law. As the procedural situation is not comparable, it is not necessary to “adjust” the legal consequence of a missing authorisation to the legal consequence of a missing address.

Therefore, the request of the [patent proprietor] to declare the opposition inadmissible cannot be granted.

No substantive decision on the dismissal of the opposition

[11] The [patent proprietor] has filed the auxiliary request that, in case that [the Board] refused to declare the opposition inadmissible, the opposition be dismissed as unallowable. As the Board has established that the opposition has to be deemed not to have been filed, the Board is not empowered to take a substantive decision and has to dismiss this request, too.

Request for a referral of the question of 

whether the opposition is admissible to the EBA

[12] According to the explanations given by the [patent proprietor] during the oral proceedings, the referral to the EBA requested by it concerns the legal question of whether the provisions governing the admissibility of an opposition prevail over R 152(6). If this were true, then the present opposition would be inadmissible and not to be treated as if it had not been filed.

[13] From the explanations given above (points [6] to [10]) it follows that the requirements for a referral of a legal question of fundamental importance to the EBA have not been fulfilled (A 112(1)) because the Board of appeal itself can answer this question based on the very wording of R 152(6) and because the literal interpretation of this provision leads to a procedurally convincing and consistent result.

[14] Nor is the result unfair (unbillig) because the decision with respect to the missing power of attorney certificate can be taken at so late a stage of the proceedings.

The fact that the power of attorney certificate was not filed by the [opponent] can have various reasons, which, contrary to the assertions of the [patent proprietor] do not exclusively express an abuse of procedure by the [opponent].

For instance, the [opponent] may, at any stage of the proceedings, withdraw the authorisation it had given to its authorised European representative, without giving reasons.

The procedural facts before the Board do not constitute sufficient proof that the respondent that is formally on record as opponent has caused the opposition or is even aware of its pendency.

As the [patent proprietor] conceded during the oral proceedings, it can happen in big groups having many legally interlaced but independent subsidiaries that an unauthorised person authorised the European representative to file an opposition because it believed that it was entitled to act in this way.

However, the procedural facts before the Board do not allow to exclude that an unauthorised person acted deliberately in the name of the [opponent] and cunningly deceived the European representative with respect to the missing authorisation, either.

In none of these cases the professional duty (standesrechtliche Verpflichtung) of a European representative to assure himself of the identity of his client, which the [patent proprietor] has invoked, can be considered to be an appropriate indication (Beweisindiz) that the opposition proceedings have to be attributed to the person that has been formally declared to be the opponent.

Also, the fact that the European representative has filed documents as evidence for the legal existence of the [opponent] during the opposition proceedings does not allow to convincingly conclude that an effective authorisation had been granted, but that the [opponent] abusively prevented the filing of a power of attorney certificate in order to trigger the fiction that the opposition had not been filed.

[15] It follows from the casuistry presented above that the unfairness of the application of the legal consequence provided in R 152(6) – as alleged by the [patent proprietor] – is exclusively based on the assumption that the [opponent] had acted in abuse of process although this assumption cannot be proven in the present stage of the proceedings. The unclear evidence (Beweislage) in the present individual case cannot serve as the basis for referring the legal question of whether the provision concerning the admissibility of an opposition are to be considered as lex specialis with respect to the legal consequence provided in R 152(6) to the EBA.

[16] The same holds true for the fact that in the present case the fiction that the opposition had not been filed had become effective only in the course of the appeal proceedings, because it would have been the duty of the OD to clarify the evidence concerning the due authorisation of the European representative (this procedural violation is also discussed below, point [19]). This failure of the OD does not justify challenging the validity of R 152(6). The risk of lengthy proceedings and corresponding high procedural costs can also arise in particular cases where there is a dispute with respect to the timely or belated payment of an opposition fee. If it is only the Board of appeal that establishes that the opposition fee has not been validly paid, then also the opposition has to be deemed not to have been filed pursuant to A 99(1).

[17] The Board of appeal does not see any reason to refer the legal question concerning the alleged precedence of the provisions governing the admissibility of the opposition to the EBA under A 112(1) in order to ensure uniform application of the law.

Decision T 126/04 based on A 14(5) EPC 1973 does not concern the interpretation of R 152(6) that is applicable here and cannot be considered to be a divergent decision, be it only for this reason. Moreover, neither the Board nor the [patent proprietor] are aware of former decisions on the present legal question. Decision J 12/88, where it was found that “proceedings before the EPO are null and void if the applicant’s representative acted without any instructions and without filing any valid authorisation” and which, therefore, ordered the reimbursement of all fees, does not go into details of the application of the fiction underlying what was then R 101(4) EPC 1973, but has not decided that the opposition was inadmissible either.

Thus the Board of appeal is of the opinion that none of the requirements for a referral to the EBA laid down in A 112(1) is fulfilled.

Reimbursement of the opposition and appeal fee, respectively

[18] As a further consequence of the legal fiction that the opposition has to be deemed not to have been filed the Board has ordered the reimbursement of the opposition fee. There is no cause in law for the EPO to withhold a fee that has been paid for a legal act that has not been performed. In the absence of any other legal arrangement, this also holds true when the fact that the act has not been performed is established on the basis of a legal fiction.

[19] The Board of appeal has also ordered the reimbursement of the appeal fee for reasons of equity under R 103(1)(a) because the appeal is to be allowed and the decision to be set aside is based on a substantial procedural violation.

The substantial procedural violation of the OD consists in the fact that it has failed to order the filing of an authorisation pursuant to R 151(1) in connection with Article 1(3) of the Decision of the President of the EPO dated 12 July 2007 on the filing of authorisations.

Even though according to this provision, the OD in principle has discretion to order the filing of an authorisation, this discretionary power was reduced to zero in the present case, in the light of the overall circumstances, and the OD would necessarily have had to order the filing of an authorisation. The mere uncertainty of the effectiveness of the filing of the opposition necessarily obliges the OD to remedy this uncertainty of its own motion before it decides on the substance of the case. In the present case, the procedural uncertainty was already established by the substantiated and documented contestation of the authorisation. In particular after having become aware of the decision of the OD in the parallel proceedings concerning application 01 127 947.8, the OD had no discretion not to request an authorisation because it had been stated in this decision that the authorisation of the professional representative of the opponent Henniges Automotive Sealing Systems North America Inc. had not been proven.

The OD has explained in its decision that in the parallel proceedings the opposition had been filed by GDX Automotive North America Inc., Delaware, and that the change of name to Henniges Automotive Sealing Systems North America Inc. had only been declared in the course of the proceedings, and that, therefore, the factual situation was different from the one underlying the present case. However, as rightly pointed out by the [patent proprietor], the change of name in the parallel proceedings has no significance whatsoever for the identification of the doubts concerning the valid authorisation of the professional representative. In the present proceedings the OD had no verifiable facts (Anknüpfungstatsachen) on which to base its trust in the alleged effectiveness of the authorisation of the professional representative. Therefore, the failure to order the filing of an authorisation constituted a substantial procedural violation within the meaning of R 103(2)(a). The Board also considers the further requirement mentioned in this provision, i.e. that the appeal is allowed, to be fulfilled. The impugned decision is to be set aside in its entirety, for the factual reasons on which the appeal was based, and the fact that the Board of appeal has ordered the opposition filed by the respondent to be deemed not to have been filed, which differs from the request of the appellant, is not to be understood as a (partial) dismissal of the appeal within the meaning of R 103(2)(a). It is also equitable to reimburse the appeal fee because the proceedings would not have had to take place if this procedural violation had not occurred.

No need for apportionment of costs

[20] The request of the [patent proprietor] to have the [opponent] bear the costs which [the patent proprietor] had incurred has to be dismissed, be it only because, as found in the present decision it cannot be established at all that the respondent has instructed “its” European representative to file an opposition. As there is no proof that the respondent has a causal responsibility for the filing of the opposition, it cannot be ordered to bear costs.

Order

For these reasons it is decided that:

1. The request of the appellant that the question of the admissibility of the opposition be referred to the EBA is dismissed.

2. The impugned decision is set aside.

3. The opposition is deemed not to have been filed.

4. The opposition and appeal fees are to be reimbursed.

5. The request of the appellant for apportionment of costs to the detriment of the respondent is dismissed.

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

The file wrapper can be found here.

T 2347/11 – Oops-A-Daisy!

The idea of withdrawing the wrong application will send a shiver down the spine of most patent attorneys. The present appeal - against the revocation of the opposed patent - presents us with a misguided withdrawal and adds a flower to the big bouquet of case law on withdrawals of withdrawals.

Having received the patent proprietor’s statement of grounds of appeal the registry of the Board forwarded it to the two opponents on March 19, 2012. This communication stated that “Any reply must be filed within four months of this notification”.

In a letter received on March 28, 2012, the patent proprietor made the following declaration:

In a further letter, received on April 5, 2012, the patent proprietor explained that there had been an error:

Obviously, the opponents objected to the withdrawal being ignored.

In what follows, the Board tries to sort out this delicate situation. There are interesting bits and pieces all over the decision, so I decided to report it in full.

Procedural matters

The cancellation of the first time limit for responding
to the statement of grounds of appeal, R 100(2)

[1.1.1] The four month time limit for opponents 1 and 2 to reply to the statement of grounds of appeal would normally have expired on 30 July 2012. Under Article 12(5) RPBA […], extension of time limits may exceptionally be allowed in the board’s discretion following receipt of a written and reasoned request.

[1.1.2] In the letter received on 8 May 2012 opponent 1 requested an indication by the board of whether the appeal was seen as not withdrawn well before the end of the time limit for responding to the statement of grounds of appeal and, if so, to set a new time limit.

[1.1.3] In the annex to the summons to oral proceedings (OPs), dated 6 June 2012, the board expressed the provisional view that under the circumstances, and particularly in the light of decision T 18/92, there was at least prima facie uncertainty as to whether the appeal procedure has been terminated by the [patent proprietor’s] declaration in the letter of 28 March 2012. These circumstances were regarded by the board as exceptional in the meaning of Article 12(5) RPBA. In the board’s view it would have been unfair and contrary to the principle of procedural economy to have expected opponents 1 and 2 to reply to the statement of grounds of appeal whilst there was at least prima facie uncertainty as to whether appeal proceedings were still pending. The board consequently cancelled the time limit for responding to the statement of grounds of appeal.

The holding of separate OPs solely on the question
of whether the appeal had been withdrawn

[1.2.1] Such separate OPs were specifically requested by opponent 1, while the proprietor requested that they not occur and that all issues be dealt with in a single OPs.

[1.2.2] In view of the present case load of the board, it is unlikely that this case would reach the front of the queue for substantive examination by the board, A 110, within the next three years, no party to the proceedings having made a request for accelerated processing of this case before the boards of appeal; see OJ EPO 2008, 220.

[1.2.3] If the board had allowed the proprietor’s request, uncertainty might have remained for at least the next three years as to whether appeal proceedings were still pending in this case. The board regarded such a scenario as unacceptable for the parties to the proceedings, in particular opponents 1 and 2, and third parties and consequently allowed opponent 1’s request.

The request to change the date of the OPs

[1.3.1] In the letter received on 12 June 2012 the proprietor requested that the date of the OPs, arranged for 16 October 2012, be changed as the representative was also the only person working on another case in which OPs were to be held on 17 October 2012 before the German Federal Patent Court. A preparatory meeting with the parties in that case was already planned for 16 October 2012. In a letter received on 18 June 2012 opponent 1 requested inter alia that the date of the OPs not be changed.

[1.3.2] According to point 2.3 of the Notice of the Vice-President of DG3 of the European Patent Office dated 16 July 2007 concerning OPs before the boards of appeal of the EPO (OJ EPO 2007, Special edition No. 3, 115), “Every request for fixing another date for OPs should contain a statement why another representative within the meaning of A 133(3) or A 134 cannot substitute the representative prevented from attending the OPs.”

[1.3.3] In the present case the board found that the argument by the proprietor’s representative that he was the only person working on the present file (and a case before the Bundespatentgericht) was insufficient to demonstrate that no other representative could deal with this matter before the EPO, particularly because, as stated in the annex to the summons to OPs, the OPs did not relate to substantive matters, but rather to the procedural question of whether the appeal procedure has been terminated by the letter of 28 March 2012. To argue this issue alone it would not be necessary to have any knowledge of the substance of the case.

[1.3.4] The board consequently decided to allow opponent 1’s request not to change the date of the OPs.

The new time limit for responding to the statement of grounds of appeal, R 100(2)

[1.4.1] As explained below, the board concludes that the proprietor’s declaration in the letter of 28 March 2012 did not terminate these appeal proceedings, meaning that appeal proceedings are still pending in this case. Hence, following opponent 1’s request, at the end of the OPs the board set a new four month time limit for opponents 1 and 2 to reply to the statement of grounds of appeal, starting the day after the OPs, i.e. on 17 October 2012. The time limit was notified to all parties in the OPs to minimize the delay in the proceedings.

The proprietor’s letter received on 28 March 2012

[2.1] It is common ground between the proprietor and opponent 1, and the board agrees, that the letter contains some details which fit the present proceedings and other details which do not. Those details which fit are the proprietor’s own reference for this case (RA 942-04EP), a “number” the same as the publication number in this case (1 640 847) and the name of the applicant (RAMBUS INC.). The details in the letter which do not fit are two references to “the application” (instead of the patent), two references to “the applicant” (instead of the proprietor) and “the current examination proceedings” (instead of the current appeal proceedings). The letter also mentions “objections raised” during the current proceedings, although no objections had been raised by the board.

[2.2] The proprietor and opponent 1 differ as to what the consequences of these discrepancies should be. According to the proprietor, the letter of 28 March 2012 must be taken at “face value”, leading to the conclusion that it was intended to relate to another file and thus has no effect in this case. According to opponent 1, the letter of 28 March 2012 must be assumed to relate to these proceedings and construed as a declaration that the proprietor is no longer interested in maintenance of the patent, which, in turn, should be construed in the light of the case law as a withdrawal of the appeal, taking immediate effect and being irrevocable, since it has been announced to the public via the online European Patent Register.

[2.3] As a preliminary point, the board considers that the fact that EPC 2000 introduced a revocation procedure, A 105a-c, is irrelevant to the present case. Such revocation procedure is explicitly excluded while opposition proceedings are pending (A 105a(2)) and there is nothing in the letter of 28 March 2012 which would give anyone the impression that it was an (incorrect) attempt to invoke this article. It would be known to an interested third party that a proprietor who had lost interest in the patent would have available only the same mechanisms for terminating the procedure as before the introduction of EPC 2000, namely either simply withdrawing the appeal (since the patent was revoked by the opposition division) or withdrawing consent to the text of the patent in accordance with A 113(2).

[2.4] The board takes the view that, as argued by the [patent proprietor], it is established case law that a renunciation of a patent must be unambiguous and free from doubt before it may be acted upon by a division or board (see for example T 386/01, cited by the [patent proprietor]). The board considers that the same must be true of a declaration that an appeal is withdrawn. As noted above it is common ground that the letter contains some details which fit the present proceedings and other details which do not. According to opponent 1, the details in the letter which fit the present case, i.e. the minority of the details, are assumed to reflect the author’s true intention, whilst the details which do not fit, i.e. the majority of the details, are seen as not reflecting the author’s intention and thus requiring interpretation. The board finds that this is not a reasonable approach, since it in effect requires that the board ignore the fact that there are details not fitting the present proceedings. The board finds in fact the opposite approach to be more reasonable, namely that it is likely that the majority of the details in the letter reflect the author’s true intention, namely to withdraw a European patent application in a different case. At any rate the board considers that the request is clearly not unambiguous and free from doubt. Had the [patent proprietor] not sent the second letter of 5 April 2012 it would therefore have been incumbent on the board to enquire as to the true intention of the [patent proprietor] before taking any action, whether that would have been in the form of a decision or simply closing the procedure. Which of these two options would have been the correct one is, in the circumstances, irrelevant. The board concludes that the intention of the author of the letter of 28 March 2012 was to withdraw a European patent application in a different case, so that the letter has no effect in this case. The reasoning in the decisions relied upon by opponent 1 and mentioned in the first question for referral to the Enlarged Board of Appeal (EBA), namely T 68/90, T 264/84, T 415/87, T 347/90, T 18/92 and T 481/96 […], does not cause the board to change its assessment of the facts in this case. It is true that in some cases cited by the opponent a statement that the proprietor wishes to “withdraw the application” has been taken as a renunciation of a patent. However this does not contradict the principle that the request must be unambiguous and doubt free. It is clear that this depends on the facts of the individual case. In some of these cases (T 347/90, T 68/90, T 481/96) it is evident from the decision that there were other, clear, indications that the patent “application” referred to was indeed meant to refer to the patent which was the subject of the proceedings. In at least one case, T 481/96, the board nonetheless checked the request with the proprietor. In two cases, T 264/84 and T 415/87, there is no discussion of any surrounding facts. In these cases there is certainly no indication that the board in fact had any doubts as to the proprietor’s intention, nor that it would have issued its decision had it had any such doubts.

[2.5] This evaluation of the letter of 28 March 2012 also applies to third parties reading the letter in the online “all documents” part of the European Patent Register. Third parties would also have concluded that the author of the letter of 28 March 2012 had at least possibly intended to withdraw a European patent application in a different case. Thus the third party would also have appreciated that there was not an unambiguous and doubt-free request.

[2.6] It follows from the above that the board does not accept opponent 1’s argument that the letter must be construed as a withdrawal of the appeal in this case.

[2.7] With respect to the online publication of this letter, the board notes as a preliminary that it is not convinced by opponent 1’s argument that decisions T 18/92 and T 481/96 support the hypothesis that the withdrawal of a European patent application in opposition appeal proceedings is equivalent to the withdrawal of the appeal by the proprietor. On the contrary, these decisions state that, under circumstances where the first instance decision had been to revoke the patent, a request for revocation of the patent had the same effect as the withdrawal of the appeal. In contrast to the situation had the appeal really been withdrawn however, the appeal proceedings did not end as soon as the request for revocation of the patent was made. Instead, the board issued a decision. In T 18/92 the proprietor requested that the patent be revoked. The board informed the proprietor in writing that the request had the same effect as a withdrawal of the appeal; see reasons, point [4]. The board thereupon issued a decision stating that the patent remained revoked. In case T 481/96 the proprietor declared that the application was withdrawn. The board in question explained to the proprietor in writing that the board interpreted the request as a request for revocation of the patent, whereupon the proprietor made a request for revocation of the patent. The reasons for the decision cite T 18/92 and state that the request for revocation of the patent had the same effect as the withdrawal of the appeal. The board decided that the patent remained revoked according to the decision of the first instance. The fact that a request for revocation of the patent had the same effect as the withdrawal of the appeal in these cases stems largely from the nature of the appealed decision. Had the appealed decision been to reject the opposition(s), then these two requests would have had different effects: revocation of the patent, on the one hand, and maintenance of the patent, on the other.

[2.8] Further with respect to the publication of the letter, under A 127 and R 143(n), withdrawals of European patent applications are announced in the form of an entry or “mention” in the European Patent Register, which is publicly available online. This information is also published in the European Patent Bulletin, which is also publicly available online. In the present case, no such announcement was made by the EPO in either the European Patent Register or the European Patent Bulletin. Hence it is not the case that the EPO has publicly announced an official interpretation of the letter of 28 March 2012 which might have led third parties to another conclusion regarding the effect of the letter of 28 March 2012.

In decision J 25/03, which was relied upon by opponent 1 and is referred to in the third question to be referred to the EBA, a withdrawal of an application had been notified to the public in the form of a mention in the online European Patent Register. For this reason a request for retraction of a letter of withdrawal of the application was not allowed. Since in the present case however the letter of 28 March 2012 is not understood as applying to this case and because no such mention of withdrawal of the application appeared in the European Patent Register or European Patent Bulletin, this decision does not change the board’s assessment of the facts in the present case.

The proprietor’s subsequent letter received on 5 April 2012

[3.1] It is established EPO practice that requests by parties which are unclear or ambiguous are queried by the EPO with the party to establish the true intention of the party concerned. In the present case, no such query by the EPO was necessary, since the proprietor soon sent a further letter, received on 5 April 2012, clarifying the intention of the submission received on 28 March 2012, namely that the letter of 28 March 2012 had been intended to relate to another case which was still in the examination phase. With the letter received on 5 April 2012 the proprietor filed a corrected withdrawal of the other patent application (No. 07 114 628.6). Whilst actions by the author of the letter of 28 March 2012, subsequent to its receipt by the EPO, have not been taken into account by the board in determining the legal effect of said letter, the board notes that the author’s subsequent actions at least do not contradict the board’s understanding of the letter of 28 March 2012.

The questions to be referred to the EBA

[4.1] The questions, formulated by opponent 1 in German (see the minutes of the OPs), are understood by the Board to be as follows in English:

1. How is the interpretation that the patent proprietor’s submission of 28 March 2012 is not a declaration that the patent proprietor is no longer interested in the maintenance of the patent in suit consistent with the six decisions cited in point 3.3 of the annex to the summons to OPs?

2. Following the submission of 28 March 2012 and its publication in the online European Patent Register, can the subsequent submission of 5 April 2012 still be considered?

3. If the answer to question 2 is yes, how is this consistent with decision J 25/03?

[4.2] According to A 112 (1),(1)(a) EPC 1973, in order to ensure uniform application of the law, or if an important point of law arises, the board of appeal shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the EBA if it considers that a decision is required for the above purposes. If the board of appeal rejects the request, it shall give the reasons in its final decision.

[4.3] In the present case, question 1 relates to a question of fact, namely the board’s understanding of the letter of 28 March 2012, rather than a question of law. Answers to questions 2 and 3 are not considered to be required (see point [4.2]) for a decision in the present case, since the intention of the author of the letter of 28 March 2012 has been determined on the basis of the information given in that letter alone, and no official interpretation of the letter was published by the EPO in either the European Patent Register or the European Patent Bulletin. Hence none of the questions complies with A 112 EPC 1973.

The remaining requests by opponent 1

[5] Opponent 1’s last two auxiliary requests, namely that the appeal be dismissed or (further) OPs be appointed and a four month time-limit for a reply to the grounds of appeal be set require that the technical issues raised in the statement of grounds of appeal also be considered. Since the OPs of 16 October 2012 were solely to discuss whether the letter of 28 March 2012 had terminated the appeal proceedings and opponents 1 and 2 have not yet responded to the statement of grounds of appeal, the board has not been able to decide on these requests in the present interlocutory decision.

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

The file wrapper can be found here.