T 1885/08 – The Broad Way

The opponent filed an appeal against the decision of the Opposition Division to reject the opposition.

Claim 1 before the Board (identical to Claim 1 as granted) read:

A bearing (1) , especially a wedge-shaped bearing (2);

1.1 with at least two partial elements, an inner part (3) for receiving a bearing pin and an outer part (4) enclosing the inner part (3) at least partly;

1.2 the inner part (3) and the outer part (4) being detachably connected with each other;

1.3 the bearing (1) being free from a housing;

1.4 the outer part (4) comprising at least two partial regions, a first partial region (7.1) forming the stop and contact surfaces (13.1, 13.2) when joining the bearing (1) with a connecting module and a second partial region (7.2) which encloses with the first partial region (7.1) the inner part (3) in the circumferential direction at least partly relative to the axis of the bearing pin;

1.5 the bearing and contact surfaces (8) for joining with a connecting module being arranged on the outer part (4);

1.6 wherein at least one elastic element (14.1, 14.2) is arranged between inner part (3) and outer part (4) with a stiffness in a region of including 500 N/mm up to and including 10 000 N/mm;

1.7 the connection of the inner part (3) with the outer part (4) occurring via a conically tapering bent element, especially a sheet metal (17) which is arranged between inner part (3) and outer part (4).

The opponent argued that this claim was lacking inventive step, and the Board came to the conclusion that this objection was well founded. In order to come to this conclusion, the Board had to interpret one of the claim features.

*** Translation of the German original ***

Inventive step

[2.1] The Board is of the opinion that document D6 is the closest prior art.

In its figures 9A to 9D,

this document shows a bearing

1.1 with at least two partial elements, an inner part (inner member 926) for receiving a bearing pin (cf. paragraph [0035]: hole 927) and an outer part (outer member 924) enclosing the inner part at least partly;

1.2 the inner part and the outer part are detachably connected with each other (cf. assembly instructions in paragraph [0030]);

1.3 the bearing is free from a housing;

1.4 the outer part 924 comprises at least two partial regions, a first partial region (flange) forming the stop and contact surfaces 925a when joining the bearing with a connecting module and a second partial region which encloses with the first partial region the inner part in the circumferential direction at least partly relative to the axis (P1) of the bearing pin;

1.5 the bearing and contact surfaces 925a for joining with a connecting module are arranged on the outer part 924;

1.6 at least one elastic element 934a, 934b is arranged between inner part and outer part;

1.7 the connection of the inner part with the outer part occurring via a conically tapering bent metal sheet 936 which is arranged between inner part and outer part.

[2.2] The Board does not share the opinion of the [patent proprietor] that D6 did not constitute the closest prior art because it concerned a different type of bearing. Claim 1 is directed at a general bearing and the engine mount disclosed in D6 clearly is such a bearing. The variant according to which the bearing can be a wedge-shaped bearing is only optional in the claim. Moreover, the X-configuration mount according to D6 corresponds to a double wedge-shaped bearing.

[2.3] Contrary to the opinion of the [patent proprietor] it follows from figure 9A of D6 that the outer member 924 encloses the inner member 926 in the circumferential direction at least partly relative to the axis P1 of the bearing pin. The construction and the assembly of the bearing according to figure 9A corresponds to the construction and assembly of the bearing of figure 8A of D6. It can be clearly seen from this perspective view that the outer member 824 encloses the inner member 826 from three sides in the circumferential direction at least partly relative to the axis P1 of the bearing pin.

[2.4] The opinion of the [patent proprietor] according to which feature 1.7 was not disclosed in D6 cannot be accepted. When assessing whether a feature is known from the prior art or not, its wording should be given the broadest meaning that is technically meaningful (cf. T 79/96). In figure 9A of D6 the connection of the inner member 926 with the outer member 924 is established via a conically tapering bent metal sheet 936 that is arranged between the inner member and the outer member. The Board is of the opinion that the effects mentioned for the claimed metal sheet element in the patent ([…] simplification of assembly and disassembly by avoiding a fixed integral (stoffschlüssig) connection, shaping of the metal sheet such that it is adapted to the inner contour of the outer part) are also obtained with the conically tapering bent metal sheet 936 of D6. That the connection is detachable and that [the sheet 936] is adapted to the contour follows in particular from paragraphs [0029]-[0030] of D6, where it is stated that the elastic elements comprising the bent metal sheet elements are to be assembled by clamping them between the outer and inner parts by means of a jig and a funnel. The conical shape of the metal sheet element is obtained by bending each single metal sheet element 936, the tip of the cone being arranged along axis P2 in figure 9A.

[2.5] Therefore, the subject-matter of claim 1 only differs from this prior art in that the at least one elastic element has a stiffness in a region of including 500 N/mm up to and including 10 000 N/mm (feature 1.6). Even though this domain of elasticity values is very broad, it is a distinguishing feature with respect to the prior art that confers novelty within the meaning of A 54(2).

[2.6] Based on the bearing disclosed in figures 9A to 9C of D6 as prior art the skilled person is faced with the objective technical problem of defining a bearing stiffness for the elastic element that is suitable for the load that is exerted in the specific case.

[2.7] It is part of the common general knowledge of the skilled person to adapt the spring characteristic (Federkennlinie) of the elastic elements of such bearings by choosing the appropriate materials and dimensions such as to adapt the bearing to the particular requirements of the intended use. The claimed domain of stiffnesses is very broad and a stiffness value between 500 and 10000 N/mm clearly corresponds to what is usual for such bearings in railway vehicle construction (see D11 […] from about 1050 to 4905 N/mm). Thus the claimed domain of stiffnesses encompasses conventional values and its selection cannot be considered to be inventive. […]

The patent is revoked.

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

The file wrapper can be found here.

T 445/08 – The Wrong Person

You might have heard that there has been another referral to the Enlarged Board of appeal (EBA). The questions concern the admissibility of appeals.

Before we discover the questions, let us have a look at the facts of the case.

The international application on which the European patent under consideration was based was filed in the name of Zenon Environmental Inc.

After grant, the patent was assigned to Zenon Technology Partnership on May 30, 2006. The transfer of ownership was registered by the EPO with effect from February 10, 2007.

The patent was revoked by the Opposition Division (OD) in its decision dated December 28, 2007.

On February 8, 2008, an appeal was filed in the name of Zenon Environmental Inc.

On March 7, 2008, the EPO sent a communication concerning the commencement of proceedings before the Board of appeal. This communication had a handwritten statement on it:

On March 13, 2008, the opponent’s representative challenged the admissibility of the appeal on the ground that it had been filed by a Zenon Environmental Inc., which was not the registered patent owner.

On the same day, the patent proprietor’s representative sent a response to the communciation and requested correction of the appellant’s name:

The Board issued a first communication on April 16, 2008, inviting the appellant’s representative to explain on whose behalf he was acting, under what provision of the EPC the correction was being requested, what precisely the correction would be and what effect it would have on the proceedings.

The appellant’s representative answered on June 23, 2008, stating that he was acting on behalf of Zenon Technology Partnership. He then stated:

In its interlocutory decision, sent to the parties exactly four years (!) after the filing of the appeal, the Board decided to refer several questions to the EBA:

(1) When a notice of appeal, in compliance with R 99(1)(a), contains the name and the address of the appellant as provided in R 41(2)(c) and it is alleged that the identification is wrong due to an error, the true intention having been to file on behalf of the legal person which should have filed the appeal, is a request for substituting this other legal or natural person admissible as a remedy to “deficiencies” provided by R 101(2)?

(2) If the answer is yes, what kind of evidence is to be considered to establish the true intention?

(3) If the answer to the first question is no, may the appellant’s intention nevertheless play a role and justify the application of R 139?

(4) If the answer to questions (1) and (3) is no, are there any possibilities other than restitutio in integrum (when applicable)?

If you want to know why the Board found a referral to be appropriate, please read on:

[1] It is undisputed that the notice of appeal as filed is not admissible pursuant to A 107 because the appellant company was not a party to the opposition proceedings and accordingly was not adversely affected by the appealed decision. It was no longer the patent proprietor.

The request for correction concerning the appellant with a view to complying with A 107 was filed only in reply to the Registrar’s letter and after expiry of the relevant two-month period provided for by R 101(1).

Accordingly, the only remaining question is whether the correction as requested, which would result in the appeal being admissible, is possible pursuant to R 101(2) or R 139.

The request for correction

[2] The notice of appeal was drafted as follows:

“European Patent No 1140330 (99955620.2-062)

Zenon Technology Partnership

We hereby give Notice of Appeal (underlined by the appellant) against the decision of the Examination Division [sic] dated 28 December 2007 to refuse the above patent application [sic]. Cancellation of the decision in its entirety is requested so that the patent may be maintained. …

The name, address and nationality of the Appellant is (emphasised by the Board):

ZENON ENVIRONMENTAL INC

845 Harrington Court

Burlington Ontario

L7N 3P3

Canada

ZENON ENVIRONMENTAL INC is a Canadian Corporation.

In the event that the Board of Appeal wishes to make a decision detrimental to the Applicant’s [sic] rights at any time, it is hereby requested that Oral Proceedings be held to discuss this matter”.

[2.1] It appears from the notice, which complies with all the requirements of R 99(1)(a) and R 41(2)(c), that the appellant is fully identified, the company in question being a real company corresponding to the former owner of the patent in suit incorporated under Canadian law, while the current owner is incorporated under the law of Delaware, USA.

[2.2] But the question of admissibility arises because it is contended that the appellant’s identification in the notice of appeal stemmed from an unintentional inversion between the former and current patent owner.

[3] The Board tends to concur with the respondent that in the circumstances of the case at hand there are no deficiencies with respect to the requirements of R 101(2) and R 99(1)(a). This latter rule, by incorporation of R 41(2)(c), defines the standard formal administrative items of information required to fill out the notice of appeal, which will permit the identification of the appellant. A 107 on the other hand, once the appellant has been identified, defines an admissibility requirement to be fulfilled by the appellant in order to be entitled to appeal.

Therefore R 101(2), which authorises correction of deficiencies under R 99(1)(a), can only justify corrections of deficiencies that are directed to completing the appellant’s identity, if this was not fully provided in the notice of appeal, in cases where the appellant is already identifiable from the notice of appeal.

[4] The Board has now to look into the case law and consider whether this conclusion […] contradicts the established case law dealing with questions of correction of a notice of appeal. The case law offers three categories of decisions to be considered:

(a) decisions in which correction of the name of the appellant was allowed under R 65(2) EPC 1973 because it was held that there was a deficiency, so it was possible to infer from the file who the real appellant was. Sometimes the Boards indicated that R 65(2) EPC 1973 was preferred to R 88 EPC 1973 as it was more specific (T 715/01 [9]);

(b) decisions in which R 88 EPC 1973 was used as a legal basis for the corrections (T 814/98);

(c) decisions in which correction was refused because the notice of appeal contained no remediable errors but rather a mistake of law.

Decisions allowing the request for correction on the basis of R 99(1)(a) and R 101 (2) (R 64 (a) and R 65(2) EPC 1973)

(a) In T 340/92, correction of the name of the appellant was allowed and the appeal declared admissible because the erroneous mention of the appellant’s name was held to be due to a confusion between the name of the appellant company (societe Croizet-Pourty) and its parent company (SOGEA). In this case a request for re-establishment of rights had been filed but the Board decided that this request was superfluous.

(b) The Board then considered that where the appellant’s name or the name of the person actually entitled to appeal was not mentioned in the notice of appeal, in non-compliance with R 64(a) EPC 1973, it was possible to remedy this deficiency under R 65(2) EPC 1973 within the time limit allocated by the Board.

The Board stated that the name of the parent company had been indicated by error, as was apparent from the statement of grounds of appeal and the explanations of the subsidiary company, which was the only one to be adversely affected by the decision under appeal and which was sufficiently identifiable through its representative’s name (point [1] of the decision). It was inferred from the fact that the subsidiary was the only party adversely affected and that it was sufficiently identifiable through its representative that the error was a deficiency that could be remedied under R 65(2) EPC 1973.

(c) It is difficult to know to what extent the solution and reasons given by the Board in that case are relevant for, or transposable to, the current case. However, as far as this Board understands, it seems that the notice of appeal in T 340/92 did not contain an entire identity of the appellant. Only its name was erroneous, which is not the case here.

T 483/90, T 613/91 and T 1/97

[5.2] (a) In T 483/90 the appeal was filed by the opponent without specifying its address; with respect to the name, even if it was not completely clear, it seems that there was no deficiency. In T 613/91 the address was missing.

(b) In T 1/97, which cited the two preceding decisions, the notice of appeal was filed in the name of the opponent; there was an inconsistency between the name indicated in the notice of appeal (“Crown Cork & Seal CO”) and the name taken from the appealed decision (“Crown Cork AGM). But there was no Swiss company “Crown Cork & Seal CO” registered at the address indicated in the notice of appeal, which was the correct address of the “Crown Cork AG” company. The Board did not accept that R 64(a) EPC 1973 applied only when the appellant’s name or address was missing and stated that the general term “deficiencies” used in R 65(2) EPC 1973 was to be interpreted as also referring to an incorrect indication of an appellant’s name and/or address (point [1.4]).

For the then competent Board “there [was] a close relationship between R 64 (a) and A 107 first sentence”, this latter presupposing the identification of the appellant (point [1.1] of the reasons). The Board went on:

“However, this does not mean that i f R 64 (a) is not or not correctly met then A 107 first sentence will necessarily not be complied with” (idem).

For the Board it was clear that what was required was that the appellant had to be sufficiently identifiable within the two-month period, if necessary with the aid of the decision under appeal, in order to establish that it was entitled to appeal under A 107, first sentence. On the other hand, deficiencies and omissions concerning the name and address of the appellant given in the notice of appeal as specified in R 64(a) EPC 1973 could be remedied later (idem).

[5.2.1] This Board agrees in principle with the analysis made in case T 1/97 by the competent Board, which given the particular circumstances of that case admitted the correction.

[5.2.2]In these three cases the circumstances seem to differ from those of the case at hand. There were deficiencies within the meaning of R 99(1)(c) (correct name not specified but appellant identified as the opponent and/or missing address; discrepancy in the addresses) which did not enable the boards to establish the appellant’s precise identity but justified an investigation.

T 97/98

[5.3] (a) In T 97/98, which, inter alia, referred to T 340/92 and T 1/97, the appeal had been filed in the name of Fresenius AG instead of Fresenius Medical Care Deutschland GmbH. In this particular case also no name was explicitly indicated as the appellant’s name, but “Fresenius AG” was mentioned as the opponent’s name.

(b) The Board first noted that it was not unusual in a notice of appeal to designate the appellant in such a way, namely by referring only to the “opponent” in cases where the opponent became the appellant. Such an indication was admitted as an indication of the appellant’s name as required by R 64(a) EPC 1973 in situations where the same representative who had represented the opponent in the opposition proceedings had then filed the appeal. The same result followed in the case of a patent proprietor/appellant in T 867/91 [1.1].

(c) This Board subscribes to the statements in T 97/98 [1.3], namely that the requirements of R 64(a) EPC 1973 are intended, along with their administrative purposes, to secure the appellant’s identification and to allow the Boards of Appeal to check its entitlement to file an appeal as required by A 107 EPC, and that R 64(a) and R 65(2) EPC 1973 cannot be construed as forming an exception to the basic principle that the appellant must be identifiable on expiry of the time limit for filing an appeal.

(d) But in the opinion of the competent Board in T 97/98 there was a deficiency in the indication of the name and address of the appellant within the meaning of R 65(2) EPC 1973 not only when no such express indications at all had been made in the notice of appeal but also when wrong indications had been made (repeated twice, point [1.3] of the reasons). And some passages of the reasons further expand this statement in a way which might be seen to be potentially conflicting with the conclusion that the Board in the present case could reach (see points [1] and [3]) : For instance, the Board stated that correction of errors in the name or address of the appellant might be of varying nature. It might lead after correction to a different natural or legal person to the one indicated within the time limit for filing the appeal having to be regarded as the appellant.

“What is required under R 64(a) and R 65(2) EPC [1973] is that there was indeed a deficiency, i.e. that the indication was wrong, so that its correction does not reflect a later change of mind as to whom the appellant should be” (the two last sub-paragraphs of point [1.3])

and

“correction of the name of the appellant to substitute a natural or legal person other than the one indicated in the appeal is allowable under R 65(2) EPC [1973] in conjunction with R 64(a) EPC [1973], if it was the true intention to file the appeal in the name of said person and if it could be derived from the information in the appeal, if necessary with the help of other information on file, with a sufficient degree of probability that the appeal should have been filed in the name of that person”. (point [1.4])

To this end the competent Board thoroughly examined the documents (extract from the commercial register, a copy of a letter to the representative and an authorisation) accompanying the request for correction.

(e) This decision, putting considerable weight on the “true intention” of the appellant, was quoted together with T 814/98 in The EPC, Singer/Stauder (volume 2, third edition, A 110, page 243) as allowing a correction of the appellant’s name on a different legal basis to that in T 340/92 or T 1/97. T 814/98 was different because it explicitly accepted the correction under R 88 EPC 1973 […]. As to T 97/98, despite the fact that the legal basis was R 65(2) EPC 1973 and not R 88 EPC 1973, it in fact used the same terminology as in G 11/91 about the requirements of R 139 (R 88 EPC 1973) when assessing whether the requirements of R 101 (2) (R 65(2) EPC 1973) in conjunction with R 99(1)(a) (R 64 (a) EPC 1973) were met.

Thus, the introduction of the notion of “true intention” to assess the requirements of R 99(1)(a) and R 101(2) could have an impact beyond the circumstances of the case upon which the Board then decided: in particular, the conclusion drawn in point [1.4] (see point (d), paragraph [5.3] supra) could prima facie embrace correction of any nature and apply to the case at hand (see [5.8] infra), all the more so since T 97/98 [1.3] explicitly referred to T 1/97 [1.1], where it is stated that the name and address of the appealing opponent can be identified from the decision under appeal (emphasis added by the Board).

[5.4] In seeking to establish the true intention, all the quoted decisions also rely very much on the fact that the appellant had the same representative and that, in conjunction with the appealed decision, it was apparent that the notice of appeal could have been validly filed only by the person adversely affected (T 340/92 [1]; T 1/97 [1.3]; T 97/98 [1.5]).

[5.5] In this Board’s view, it is not pure speculation to read the common reasons of the decisions cited above in the sense that, under R 101(2) (R 65(2) EPC 1973), the entire identification of the appellant could be replaced provided that the true intention to file an appeal in the name of the right person was established, one of the possible means of evidence for establishing the true intention being the fact that nobody else pursuant to A 107 EPC would have been entitled to appeal. In fact, this interpretation crystallised in T 15/01 and T 715/01.

[5.5.1] In the first case the appeal was filed in the name of a legal person which no longer existed due to a merger. The Board took a broad view of the possibilities offered to an appellant to correct the notice of appeal, since it referred to the case law justifying correction on the basis of R 88 (T 814/98; T 460/99) as well as to T 97/98 (commented upon supra point [5.3]). The Board endorsed T 97/98, according to which

“nothing [in R 65(2) and R 64(a) EPC 1973] allowed them to be applied only to certain kinds of deficiencies and as a matter of principle not when the correction of a wrong indication of the name or address of the appellant leads to a different person to the one originally expressly named in the appeal having to be regarded as the appellant.”

The deficiency was that the indication was wrong, so that the correction expressed what was intended when the appeal was filed (T 15/01 [14]).

In the second case, the notice of appeal had been filed by the right person while the statement of grounds of appeal was filed by the new patent proprietor, who however had not yet been registered as such. But, and this is why this Board has to mention this case, the Board then did not make any distinction between the two appeal procedural steps, considering the same admissibility requirements to be met both by the statement of grounds and by the notice of appeal (point [4] of the reasons) :

“the only question remains whether a correction of the name of the applicants in the said statement of grounds is allowable under R 65(2) EPC [1973]”.

Then the Board, in point [5], referred to the passage from T 97/98 quoted in point [5.3(d)] above and then concluded (point [10(f)]) :

“(f) Thus, the board considers that in the present case it is possible to remedy the deficiency under R 65(2) EPC [1973], even after expiry of the time limit for filing the appeal […], since the true intention of the appellants was to comply with the formal requirements for making an appeal admissible. This corresponds to applying in the present situation the rationale of T 97/98”.

[5.5.3] Again, it is true that in T 715/01 the procedural step concerned was not the notice of appeal; but this Board understands, given the general statement in T 715/01 [5], that it was the Board’s view in this latter case that the broad interpretation of T 97/98 regarding the statement of grounds could be applied to the notice of appeal. In this case such broadening would come into open conflict with G 2/04, T 656/98 or T 128/10.

[5.6] In case T 1421/05 the decisive issue was who the opponent was. The appeal had been filed in the name of an opponent who had transferred the assets to which the opposition related and who no longer existed but who had a universal successor. After having decided that the status of opponent remained with the transferor, the Board then stated:

“An appeal filed by mistake in the name of an opponent who no longer exists but who has a universal successor, and which was obviously intended to be filed on behalf of the person who is the actual opponent and who was prejudiced by the decision, namely the universal successor, is admissible; if necessary the notice of appeal and statement of grounds of appeal may be corrected to record the name of the true appellant/opponent” ([headnote 4; 6-7]).

The correction of the notice of appeal was undoubtedly not the main issue in this case (the question arose in fact as a consequence of the main issue, namely who the opponent was), but the Board, in the event that the notice of appeal and statement of grounds were defective, gave its reasons why the correction, if necessary, should be allowed (point [7] of the reasons). The Board indicated that it followed the approach of the Board in T 715/01, which had decided that the relevant rule was R 65 and not R 88 EPC 1973, which was in Chapter V of Part VII of the Implementing Regulations to the Convention, and that the principles for correction under R 65(2) EPC 1973 were set out in T 97/98. While in T 97/98 the Board was satisfied that, from reading the appeal with the help of the indications in the impugned decision, a third party could have derived who really intended to appeal, without knowing the details later brought before the Board of Appeal, T 1421/05 went still further and stated that the Board in T 97/98 did not mean that it was a necessary requirement for correction that the information should be derivable from the appeal (point [7.5] of the reasons).

[5.7] In the light of this case law, having considered the general statements of the decisions mentioned above, particularly in T 97/98, against their specific factual background, this Board could come to the conclusion that some differences can be detected in the factual circumstances (see points [5.1(c)] and [5.2.2] above), which in the present case could justify a refusal of the requested correction without apparently deviating from the established case law. But the Board is not convinced that these differences are more than formal differences: what was found decisive was the true intention which led the boards to decide that the indication was wrong and the true intention was established with the help of information taken from the file or the fact that the representative had been the same. Moreover, there are decisions, such as T 715/01 and T 1421/05, which developed the potentially broad interpretation of T 97/98 in a sense which in fact can be seen as broadening the scope of R 101(2).

[5.8] This is why the question arises in the present case whether, in view of this possible broad interpretation, this Board should consider the alleged incorrect indication in the notice of appeal as a deficiency pursuant to R 99(1) (a) and R 101(2). In fact the parameters used to establish the true intention in the decisions analysed above point to an error qualifying as such a deficiency in the identity of the appellant: from the file and the appealed decision it is immediately clear that Zenon Technology Partnership is the only party adversely affected, the same representative has been acting for this company since the opposition procedure, no transfer of rights has occurred, the appeal fee had been paid in the name of Zenon Technology Partnership, in addition the anomaly was immediately seen by the Registrar - all of which could plead in favour of a genuine error.

[5.8.1] As regards genuine errors, the Board refers here to The Annotated EPC by Derk Visser, 19th edition, page 581, where the case law of the boards of appeal in this matter is summarised as follows:

(a) the first requirement for a correction to be authorised under R 101(2) is that the deficiency is a genuine error, adding however that the correction must reflect what was intended when filing the appeal, which is an intentional feature;

(b) the second requirement reflects, in the Board’s view, the ambiguity of the case law. It is stated:

(i) on the one hand that the indication in the notice of appeal must be such that the appellant is identifiable upon expiry of the period for filing the appeal, even though it is allowed to make the correction after that point in time, so that it is possible to determine whether or not the appeal was filed by the entitled person in accordance with A 107. This Board fully agrees with this statement, which was already in T 1/97 (see point [5.2 (b)] supra) . But there is a second comment.

(ii) on the other hand that it is sufficient for that purpose that it is possible to derive from the information in the appeal, if necessary with the help of other information on file, with a sufficient degree of probability by whom the appeal should have been filed (T 97/98 [1.4]) (emphasis added by the Board). This remark introduces an element of subjectivity into the assessment of the requirements of R 99 (1) (a) and R 101(2).

[5.8.2] Having said that, the Board notes that there is another trend in the case law, which sticks to objective criteria.

Decisions rejecting the request for correction

G 2/04, T 128/10 and T 656/98

[5.9.1] The facts underlying this case were that the opponent (Akzo Nobel N.V.) and the company owning the activities to which the opposition pertained (bioMérieux B.V.) had filed a notice of appeal because they were in doubt as to which of the two companies was entitled to appeal. One of the requests was that the name of the appellant bioMérieux B.V. in the notice of appeal be corrected to Akzo Nobel N.V. if this company was the one entitled to appeal. The EBA noted that the opponent Akzo Nobel N.V., clearly identified as the opponent in the declaration of opposition, was not indicated as the appellant but bioM6rieux was (point [3.1] of the reasons). This was in conformity with the true intention of the author of the declaration. The EBA went on to state that it was the established case law that in such circumstances there was no deficiency which might be remedied in accordance with R 64(a) in conjunction with R 65(2) EPC 1973, nor was there an error which might be corrected in accordance with R 88 EPC 1973 (point [3.1] of the reasons).

[5.9.2] Thus this Board cannot conclude from these statements that the EBA really endorsed T 97/98 in its general statements, or T 715/01, applying these statements: Indeed the EBA then concluded that

“considering the overriding interest that a party must be identifiable, the [Enlarged] Board sees no reason for a broadening of the scope of application of R 65(2) or R 88, first sentence, EPC [1973] (point [3.1] of the reasons)

[5.9.3] In the Board’s interpretation this only means that where there is no deficiency in the sense of R 99(1)(a) and R 101 (2) there is no reason to search for the true intention, the EBA leaving open the question of the relation between R 101(2) (R 65(2) EPC 1973) and R 139 (R 88 EPC 1973).

T 128/10 and T 656/98

[5.9.4] In T 128/10, the mistake as in T 656/98 was held to be a mistake of law as to who was entitled to appeal.

[5.9.5] The circumstances these two cases have in common are that the notice of appeal was filed on behalf of an identified person and was intended to be filed on behalf of this person, but it transpired afterwards that this person was not entitled to appeal (after a transfer of rights it happened that the appellant had not yet become the registered patent owner at the time of filing the notice of appeal).

[5.9.6] In these cases where it was submitted that the real intention was to file the notice of appeal on behalf of the patent proprietor, the Boards concluded that the intention as to the identity was clear and that there was neither a deficiency nor a mistake (T 656/98 [7.1] and T 128/10 [5.4]).

[5.9.7] The only difference between the case at hand and T 128/10 or T 656/98 is that in the latter cases there was a clear mistake of law: the patent proprietors had overlooked the fact that registration was a necessary requirement for being recognised as patent proprietor in proceedings before the office and therefore for being entitled to appeal, while in the present case the mistake consists in having filed an appeal in the name of a person who was not entitled to appeal, when there had been no change which could have introduced a possible hesitation about who was entitled to appeal. Accordingly, if there were not the reservations made in point [5.8] supra, and the question about the possible role of the intention, the present case could correspond to the situation as described in T 656/98 [7.1-3], where the Board then concluded that there was no deficiency, hence no room for any application of R 65(2) EPC 1973.

Decisions based on R 139

[6] The Board is aware that the case law is not uniform as to whether the scope of application of R 139 extends to an act of procedure such as the notice of appeal.

[6.1] T 715/01 excluded it and preferred to apply R 65(2) EPC 1973. T 814/98 allowed the correction of the appellant’s name on the basis of R 88 EPC 1973 without any preliminary discussion about the applicability of the rule. Other decisions simply mentioned it was possible without any comments (see for instance T 15/01 [14]). Consequently this rule cannot be seen as a satisfying solution.

[6.2] The upshot of the above is that the decision of this Board on the admissibility of the notice of appeal depends on the role allocated, or not, to the appellant’s intention, either under R 101(2) in conjunction with R 99(1)(a) or under R 139. Accordingly, given the fact that the case law offers no clear uniform answer, the Board will now consider the respondent’s auxiliary request for a referral to the EBA.

Auxiliary request: referral to the EBA

[7] In fact, it results from all the decisions examined above that the crucial line of partition within the case law is, or should be, the existence of a deficiency, always relied on by the decisions, rather than the intention.

[7.1.1] Either the notice of appeal was filed in the name of the presumed entitled person, who ultimately was not entitled. Whatever the intention was at the time of filing, it led to a mistake of law and to the inadmissibility of the appeal (T 128/10; T 656/98).

[7.1.2] Or something happened, perhaps not intentionally, which led to a deficient indication in the notice of appeal. But the difficulty with respect to this category of decisions is that some of them accepted a very broad definition of “deficiency”, by having recourse to the notion of “true intention” to characterise such deficiencies, e.g. including discrepancies, as an unintentionally wrong identification. And in these cases the true intention was thoroughly investigated to complete the identity of the identifiable person (see for instance T 1/97 above).

[7.2] In that light, the current case could belong to the first category, as already asserted (point [5.9.7]): the notice of appeal was filed on behalf of somebody not entitled to appeal, and it contains no deficiency pursuant to R 99(1) (a), so that there is no reason to trigger the application of R 101(2).

[7.3] But in the light of the comments in points [5.8] above, it remains an open question whether a wrong indication can be considered a deficiency open to correction under R 101(2) because the appellant contends that the true intention was to file an appeal in the name of Zenon Technology Partnership, submitting arguments close to those admitted to establish the true intention

[7.4] As already indicated in points [5.8] above, the case law has introduced the subjective notion of “true intention” and the possibility to “derive from the information in the appeal, if necessary with the help of other information on file, with a certain degree of probability by whom the appeal should have been filed”.

Thus uncertainty exists about whether and, if so, under which requirements it is possible to have recourse to the true intention to assess whether there is a remediable deficiency under R 101(2) in conjunction with R 99(1)(a).

This uncertainty concerns an important point of law: the admissibility of an appeal.

Owing to this uncertainty the Board could turn to R 139, which could be a possible solution. But this rule offers no clear answer either (see points [6], supra).

[7.5] Pursuant to A 112(1)(a), in order to ensure uniform application of the law, or if a point of law of fundamental importance 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.

[7.6] In the present case, the main reason to refer a question to the EBA is that a point of law of fundamental importance has arisen. Given the overriding interest that the party must be identifiable as underlined by the EBA (G 2/04 [3.1]), it is a matter of legal certainty that the admissibility requirements for a notice of appeal should be immediately clear for the parties and should not need to be settled at the price of a preliminary admissibility discussion about the definition of a deficiency and the possible remedies.

[7.7] At this point the Board refers and subscribes to T 656/98 [1.1], where it is stated that it must be possible to determine the person entitled to appeal precisely and easily if the appeal process is not to be tangled up already at the outset in complicated investigations as to the relations between the original parties and later would-be parties and would-be appellants. This declaration made in relation to the transfer of rights to patent ownership remains relevant for the current case because it addresses the status of the appellant.

[7.8] Apart from the trouble caused by the investigations which might be necessitated by a search for the true intention, the Board is not convinced that allowing the correction only on the basis of the true intention would not result in broadening the scope of application of R 101(2) in a manner which was prohibited by G 2/04, also with the consequence contra legem of eluding R 101(1) and A 107.

[7.9] In fact the question is whether this broad interpretation would not lead in extreme cases to simply ignoring A 107: in cases where the patent is revoked or the opposition is rejected, the sole possible appellant being the sole losing party or its legal successor, the requirements of R 99(1) (a) could simply be ignored.

[7.10] Furthermore, while the EBA in G 2/04 had no reason to discuss the relationship between R 65(2) and R 139 EPC 1973, now R 99(1)(a) and R 101(2), for the purpose of the referral at hand, it admitted implicitly that it was an issue. In the present case the appellant bases its request on both provisions, so that the question of their relationship is also decisive for the present decision on admissibility.

[7.11] Finally, having regard to certain elements of case law, the Board cannot be sure that the true intention of the appellant has no role to play. Accordingly, taking the responsibility to pronounce judgment on this important point of law in a sense which would depart from these elements of case law would be fatal for the appellant’s case. This would add unfairness in a context of legal uncertainty.

[8] This is why the Board comes to the conclusion that the issue is to be referred to the EBA.

Order

For these reasons it is decided that: 

The following questions are referred to the EBA:

(1) When a notice of appeal, in compliance with R 99(1)(a), contains the name and the address of the appellant as provided in R 41(2)(c) and it is alleged that the identification is wrong due to an error, the true intention having been to file on behalf of the legal person which should have filed the appeal, is a request for substituting this other legal or natural person admissible as a remedy to “deficiencies” provided by R 101(2)?

(2) If the answer is yes, what kind of evidence is to be considered to establish the true intention?

(3) If the answer to the first question is no, may the appellant’s intention nevertheless play a role and justify the application of R 139?

(4) If the answer to questions (1) and (3) is no, are there any possibilities other than restitutio in integrum (when applicable)?

NB: The referral is pending under reference G 1/12.

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The file wrapper can be found here.

NB: I think Le blog du droit européen des brevets was first to spread the news. You can find a French summary of the referral there.

T 871/08 – Round 3

In this case all the opponents filed appeals against the decision of the Opposition Division to maintain the patent in amended form.

Claim 1 of the main request before the Board read:

1. A process for production of hydrogen peroxide according to the anthraquinone process comprising the steps of alternate hydrogenation and oxidation of anthraquinones and tetrahydro anthraquinones in a working solution, characterised in that the working solution to be hydrogenated comprises a mixture of alkyl-substituted anthraquinones and alkyl-substituted tetrahydro anthraquinones dissolved in at least one organic solvent, wherein from 10 to 55 mole % of the anthraquinones and the tetrahydro anthraquinones are substituted with one amyl group, and the molar ratio of alkyl-substituted tetrahydro anthraquinones to alkyl- substituted anthraquinones is from 3:1 to 9:1. (my emphasis)

In what follows, the Board examines the novelty of this claim:

[2.1] Document D9 […] relates to a method for hydrogen peroxide production by an anthraquinone method involving hydrogenation of a mixture of alkyl and tetrahydroalkyl anthraquinones dissolved in organic solvents. The mixture is further supplemented with amyl anthraquinones and tetrahydroamyl anthraquinones.

[2.2] In Example 3 of D9, the working solution contains

• 0.233 mol/l of 2-ethyl anthraquinone,
• 0.312 mol/l of tetrahydro 2-ethyl anthraquinone,
• 0.139 mol/l of tetrahydro anthraquinone,
• 0.386 mol/l of tetrahydro 2-isoamyl anthraquinone.

It follows that in the working solution:

• 36,07 mole % of the anthraquinones and the tetrahydro anthraquinones are substituted with one amyl group;
• the molar ratio of alkyl-substituted tetrahydro anthraquinones to alkyl-substituted anthraquinones
• when calculated from the values in Example 3 - is 2.996 : 1.

[2.3] The [patent proprietor] argued that the claimed subject-matter was novel, because the value 2.996 was lower than the lower limit of 3:1 defined in claim 1 at issue.

This argumentation is not accepted by the board. When comparing a value from the state of the art (in the present case the value “2.996”) - with those claimed (here the range of values of “from 3:1 to 9:1”), the state of the art value has to be given the same accuracy as the one claimed.

In the case at issue, the values in the claims have been quoted without any digit after the comma, which means that for comparison purposes, the value 2.996 has to be rounded up to 3, which thus falls into the range of the claimed values.

This judgement is in agreement with the jurisprudence of the boards of appeal (in particular T 1186/05 [3.6.1-5]; T 708/05 [3]).

All the other features defined in claim 1 being also disclosed in combination in document D9 […], claim 1 of the main request lacks novelty under A 54 (1) and (2).

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T 36/11 – An All Too Sudden End

When an opposition is withdrawn, the Opposition Division (OD) can continue the proceedings of its own motion. But it does not have to, even if the patent proprietor would prefer to keep the proceedings alive.

An opposition had been filed on February 3, 2010 by Deutsche Telekom, but two weeks later the opponent withdrew the opposition.

The OD informed the patent proprietor of the withdrawal (on March 1) and then invited him to file his observations with respect to the notice of opposition (on March 12).

The proprietor filed observations on September 10.

On November 25, he was informed that the OD had decided to discontinue the proceedings.

He then filed an appeal against this decision.

The Board found this appeal to be inadmissible:

[1.1] In accordance with A 107 and R 101(1), one of the requirements for an appeal to be admissible is that the appellant is adversely affected by the decision under appeal. In the present case, this requirement is not met for the following reasons:

[1.2] In its reply dated 10 September 2010 to the communication issued by the OD, the proprietor requested that the opposition be dismissed. In support of its request, for each one of the claims as granted, the proprietor submitted arguments against the opponent’s arguments as set out in the notice of opposition in support of lack of novelty and/or lack of inventive step. Apart from a conditional request that oral proceedings be held, the proprietor did not submit any further requests.

[1.3] From the reply it can thus unambiguously be derived that the proprietor requested that the opposition be dismissed and, hence, that the patent be maintained as granted.

[1.4] By deciding to discontinue the opposition proceedings, the OD fully acceded to this request, since the decision had the immediate consequence that the patent was maintained as granted. In this respect, it is not relevant whether or not the order of the decision literally corresponds to the proprietor’s request. In the board’s view, what is decisive is that the substance of the decision given in the order fully accedes to the request, which in the present case is that the patent be maintained as granted.

[1.5] In the statement of grounds of appeal, the appellant argued that it was adversely affected by the decision, since, notwithstanding the opponent’s withdrawal, the EPO had invited the proprietor to file its observations, which was taken by the proprietor as a clear indication that the EPO planned to continue the opposition procedure of its own motion. Further, since it was evident to the proprietor that the EPO was going to examine the facts of its own motion, the appellant assumed that the further prior art as filed with the reply would also be considered and examined. Issuing a decision to maintain the patent as granted only after an examination of this prior art would have led to “the needed clarity on this patent, in the interest of the public and all parties involved”.

[1.6] These arguments are not convincing for the following reasons: With the communication dated 12 March 2010 the proprietor was invited to file its observations. This invitation cannot be interpreted as indicating that the proceedings would be continued. For example, a reply in which the proprietor were to submit that, in view of the withdrawal of the opposition, the opposition proceedings were to be discontinued, would have been fully compatible with the content of the communication. As to the prior art documents filed with the reply, the board notes that in the accompanying letter reference to these documents is only to be found at points II. 3 and 4, which read as follows:

“3. For the sake of completeness, Patentee submits as further items of prior art Exhibit E 10: Patent JP-03-244224 including English abstract and English claims Exhibit E 11: Patent JP-2001-197551 including English abstract and English claims and also machine translation of claims and description These items of prior art were cited by the Japanese Patent Office during examination of a Japanese family member of the patent in suit.

4. Furthermore, Patentee submits the following items of prior art which were cited by examiners of the USPTO during examination: Exhibit E 12: US6088002 Exhibit E 13: US20030003959”

In the board’s view, these submissions do not imply that the proprietor made a request that the opposition proceedings be continued and, more specifically, that the cited prior art documents be considered and examined by the OD. Nor do they imply or suggest that an examination of these documents would lead to “the needed clarity on this patent, in the interest of the public and all parties involved”.

[1.7] The board further notes that under A 113(1) the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. This procedural right is intended to ensure that no party is caught unawares by reasons given in a decision turning down its request on which the party has not had the opportunity to comment. In the present case, since the opponent had withdrawn its opposition, the proprietor was the only remaining party to the opposition proceedings. Further, from the decision under appeal it follows that the OD had no cause to continue the proceedings of its own motion as the dossier stood at the time (see point II above). If the OD had considered that the stage reached in the opposition proceedings was such that they were likely to result in a limitation or revocation of the patent without further assistance from the opponent and without the OD itself having to undertake extensive further investigations, it should have continued the proceedings (cf. R 84(2), Guidelines, D-VII, 6.2 and 6.3).

In the present case, this situation apparently did not occur and, analogous to the case in examination proceedings in which the examining division is not obliged to issue a communication in which its reasons as to its positive findings on the grant of a patent are set out, the OD was not obliged to communicate to the proprietor the reasons as to its positive findings on the maintenance of the patent as granted in order to comply with A 113(1). Hence, there was no violation of the right to be heard, which might otherwise have adversely affected the proprietor.

[1.8] Since the decision corresponds to and is fully consistent with the proprietor’s unambiguous request at the time and the board sees no other reason why the proprietor would have been adversely affected at the time the decision was delivered, the board concludes that within the meaning of A 107 the proprietor was not adversely affected by the decision.

[1.9] Consequently, the appeal is to be rejected as inadmissible, A 107 and R 101(1).

I understand that if the patent proprietor had responded by filing a main request limiting claim 1 of the patent before the OD terminated the proceedings, the OD could not have acted as it did - or, if it had done so, the appeal would have been admissible.

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T 1285/11 – Something Special

The applicant filed an appeal after the Examining Division (ED) had refused his Euro-PCT application.

The application as originally filed contained 28 claims. The product claims 1 to 22 and 26 to 28 were directed to various solid-state forms of (3-(((4-tert-butyl-benzyl)-(pyridine-3-sulfonyl)-amino)-methyl) -phenoxy)-acetic acid sodium salt or a hydrate thereof.

The EPO, acting as an ISA, considered the application to be non-unitary and the claims to cover nine inventions: (1) claims 1 (in part), 20 and 21 ; (2) claims 1 (in part), 2-4, 17-19, and 22-25) ; (3) claims 1 (in part) and 5-7 ; (4) claims 1 (in part) and 8-10 ; (5) claims 1 (in part), 11 and 12 ; (6) claims 1 (in part), 13 and 14 ; (7) claims: 1 (in part), 15 and 16 ; (8) claims 26 and 27 ; (9) claim 28.

The reasons given for the finding of non-unity were essentially that document D1 already disclosed (3-(((4-tert-butyl-benzyl)-(pyridine-3-sulfonyl)-amino)-methyl) -phenoxy)-acetic acid sodium salt as a white solid for use in treating conditions that are related to the modulation of prostaglandin. Because it already belonged to the prior art, said salt could not be viewed as constituting a “special technical feature” in the sense of Rule 13.2 PCT. The problem of providing further forms of said salt had been solved by providing different polymorphs thereof according the nine inventions listed. These inventions were therefore not so linked as to form a single general inventive concept, contrary to the requirements of Rule 13.1 PCT.

Since no additional search fees were paid, the ISR was restricted to the invention first mentioned in the claims.

Together with the request for entry into the European phase, the applicant filed amended claims 1 to 10 relating to invention (2) above.

In a first communication dated 21 September 2010, the ED referred to the written opinion of the ISA, and noted that no additional fees had been paid in the international phase, following an objection of lack of unity by the ISA. It was therefore requested that the applicant “restrict the claims to invention 1 as required by R 164(2)”.

The applicant disputed that R 164(2) could be seen as a bar to further prosecution based on the subject-matter now claimed, since a search with respect to the subject-matter as defined under “invention 1” would inevitably also have covered crystalline form A of the present salt. No further search was therefore required.

The ED maintained its objection. It finally refused the application at the end of oral proceedings (OPs) held on 7 March 2011.

According to the written decision, the ED considered that the subject-matter of this request contravened R 164(2) and R 137(5). It considered that the fact that no further search fees or protest fees had been paid in the international phase amounted to a tacit agreement on the part of the applicant with the findings of non-unity of the ISA. With reference to decision G 2/92 and the Guidelines for Examination, chapter III, point 7.11.4, the ED submitted that the only way for the applicant to seek protection for the present subject-matter would be to file a divisional application.

Here is what the Board of appeal had to say:

Refusal based on R 137(5)

[2] The ED inter alia relied on R 137(5) in refusing the present main request, citing the text of this R according to which “amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept”.

The board notes that this wording is the same as that of R 86(4) EPC 1973. This rule was introduced to give the EPO the means to react appropriately when the applicant dropped existing claims and replaced them with originally non-unitary subject-matter extracted from the description (see the Notice published in OJ EPO 1995, 409, in particular pages 420 and 421, point 2; see also Guidelines for Examination, C-VI, 5.2(ii), in particular the second paragraph of this section). This is also reflected in the passage of the Guidelines for Examination cited by the ED in this context, namely, chapter III, point 7.11.1(iv), which states that, 

“if the claims to be examined relate to an invention which differs from any of the originally claimed inventions and which does not combine with these inventions to form a single inventive concept, an objection under R 137(5) should be raised in the first communication” (emphasis added).

Indeed, according to well-established case law, 

“R 86(4) does not apply when the applicant has not paid the search fee in respect of a non-unitary invention relating to the originally filed claims” (see T 708/00, [7, 5-8]).

In the present case, the subject-matter of the amended claims according to the main request was already present in the claims as originally filed (see claims 2 to 4, 17 to 19, 22 to 25). Therefore, the main request does not contravene R 137(5) and may not be refused on this basis.

Refusal based on R 164(2)

[3.1] R 164(2), which entered into force with the 2000 on 13 December 2007, applies to the present application, since the international application on which it is based […] was filed on 25 August 2008. This rule requires that,

“where the ED finds that the application documents on which the European grant procedure is to be based do not meet the requirements of unity of invention, or protection is sought for an invention not covered by the ISR ..., it shall invite the applicant to limit the application to one invention covered by the ISR ...” (emphasis added).

The board notes that it can already be deduced from the juxtaposition of the expressions “an invention not covered by the ISR” and “one invention covered by the ISR” that, in order for R 164(2) to be applicable, the respective non-searched and searched inventions being referred to cannot belong to a single invention and must indeed be non-unitary with respect to one another. As aptly analysed in the decision of the Legal Board of Appeal J 3/09 [3.5.7], it is also implied by the wording of R 164(2), giving the EPO the power to invite the applicant to limit the application to one invention covered by the ISR, that where there is in fact only “one” invention there is no sanction.

According to the practice of the EPO, as set out in the Guidelines for Examination (C-III, 7.10, first paragraph) and explained in detail in decision J 3/09 [3.5.6]), the responsibility for establishing whether or not the application meets the requirements of unity of invention ultimately rests with the ED, and the opinion of the EPO acting as the ISA on lack of unity is not final or binding on the ED. The fact that the applicant did not pay further search fees or protest fees in the international phase cannot therefore be seen as a tacit agreement with the findings of non-unity of the ISA, as submitted by the ED in the decision under appeal.

The situation referred to by the ED, whereby subject-matter in respect of which a search fee has not been paid can only be pursued in a divisional application, presupposes that the searched and non-searched inventions are in fact found to be non-unitary when the ED upon review agrees with the opinion of the search division (see decision J 3/09 [5.1-7] and references therein to decisions G 2/92 and T 631/97; see also Guidelines for Examination, C-III, 7.10, third and fourth paragraphs, and 7.11.1(ii),(iii)).

To the extent that an objection of non-unity raised by the ISA turns out to be unjustified, the applicant is entitled as of right to have the whole subject-matter of his unitary invention searched. If need be, an additional search would have to be performed (see Guidelines for Examination, C-III, 7.10, third paragraph, last sentence, and 7.11.1(v); decision J 3/09 [3.5.6, 5.2]), regardless of whether or not this might involve an additional effort.

With respect to the ED’s reference to the Guidelines for Examination, chapter III, point 7.11.4 […], it is noted, for the sake of completeness, that this relates to the situation where the EPO has established an international preliminary examination report (IPER). An IPER has not been issued in the present case, since the applicant did not file a demand requesting examination of the international application by the IPEA (Chapter II of the PCT). In addition, it is noted that point 7.11.4 must be read in the context of preceding point 7.11.3, which explicitly refers to the case where “the applicant successfully refutes the objection ... or the interpretation of the rules regarding unity of invention was erroneous”.

[3.2] Consequently, in order to establish whether R 164(2) is applicable in the present case, it must be decided whether the ED was correct in its assessment that the subject-matter now claimed in the main request (“invention 2”) and the searched subject-matter (“invention 1”) are non-unitary.

The objection of lack of unity of the ISA, on which the examination division relied, was raised a posteriori, based on document D1 […]. In Step D of Example 14d (page 200), a process is disclosed for the synthesis of the present sodium salt, which is obtained as a “white solid”. Thus, this material already forms part of the prior art, but its solid-state structure is not specified, that is, whether it is crystalline, non-crystalline or amorphous (cf. application in suit, originally filed claims 1 to 25; 26, 27; and 28, respectively). It must therefore be concluded, prima facie, that any one of these features, including “crystallinity”, defines a contribution over the prior art, and therefore qualifies as a potential “special technical feature” in the sense of R 44(1).

The ED argued in this context that, although the ISA had found “invention 1” to be novel with respect to document D1, it had not considered it to be inventive with regard to said document (cf. above point XI). However, it is noted that this opinion of the ISA on novelty and inventive step was not included as part of the analysis relating to unity, and for good reason. Indeed, in the present case, a definitive conclusion as to whether the common concept of “crystallinity” is novel and inventive cannot be reached without a full substantive examination procedure, with active participation of the appellant. This is clearly required in order to establish what solid-state form is actually obtained in Example 14d of document D1 […], and whether any claimed subject-matter possesses surprising properties with respect to the prior art material, as contended by the appellant […].

Consequently, the board concludes that, prima facie, the feature of “crystallinity” can be regarded as constituting a “special technical feature” in the sense of R 44(1), establishing unity between present “invention 1” and “invention 2” in accordance with A 82. Accordingly, as explained above under point 3.1, R 164(2) cannot be seen as a bar to further prosecution based on the subject-matter now claimed in the main request.

Remittal to the first instance

[4] It follows from the preceding considerations that the reasons for the refusal of the present application by the ED were not justified. Under these circumstances, the board exercises its power under A 111(1) and remits the case to the ED for further prosecution.

Examination can thus be resumed on the basis of the main request.

The ED will have to consider whether an additional search is required in the present case […].

With respect to the issue of clarity, it will in particular have to be examined whether the main request meets the requirements of A 84, taken in combination with R 43(2), in respect of the number of independent claims in the same category.

In addressing the issue of novelty, the ED should assess whether convincing evidence or arguments have been provided to establish that the claimed crystal form is in fact novel over the product produced by the process according to Example 14d of document D1.

Reimbursement of the appeal fee

[5] According to A 113(1), the decisions of the EPO may only be based on grounds on which the parties concerned have had an opportunity to present their comments. In this context, the word “grounds” should be interpreted as referring to the essential reasoning, both legal and factual, which leads to the refusal of the application (see T 951/92 [3(v)]).

In the present case, the ED referred in a first communication to the written opinion of the ISA stating that the claims as originally filed were non-unitary, and, with reference to R 164(2), requested that the applicant restrict the claims to the invention for which a search fee had been paid […]. This is in accordance with standard procedure as outlined in the Guidelines, chapter C-III, 7.10.

However, in response to the counter-arguments submitted by the applicant, the ED merely referred once again to R 164(2) […]. This pattern was repeated in the subsequent reply of the applicant and summons to attend OPs, despite the fact that the applicant had submitted additional arguments and requested a reasoned response from the ED […]. Finally, in its letter of 4 February 2011, the applicant provided a yet more detailed analysis of the case and once again complained of the lack of reasoned response on the part of the ED […]. This letter remained unanswered prior to OPs held before the ED on 7 March 2011.

Thus, neither of the communications of the ED referred to in the previous paragraph was in line with the requirements of R 71(2), since they contained no reasoned statement as to why the arguments of the applicant had not been accepted and the objection under R 164(2) maintained. This conduct of the ED thus deprived the applicant of the possibility of preparing meaningfully for the scheduled OPs since it was not clearly informed of the essential reasons on which the findings of non-compliance were based.

Regarding the decisive question of whether “inventions 1 and 2” were to be considered unitary […], the ED submitted that, since it had invoked and applied R 164(2) in its communications, it was implicit that it had reviewed the non-unity objection brought forward in the international phase and found this to be justified […]. However, in order to satisfy A 113(1), the outcome of this review should have been communicated in such a way as to permit the applicant to understand and respond to the essential reasons for the conclusion reached.

Indeed, from the statement of grounds of appeal […], it is apparent that the reasoning of the ED for rejecting the applicant’s argument that “crystallinity” was to be seen as a “special technical feature” was only communicated to the applicant with the decision under appeal.

Moreover, it is apparent, from the communications of the ED and from the minutes of the OPs before the ED, that the objection under R 137(5), on which the refusal was also based, was communicated to the applicant for the first time in the form of a statement at the conclusion of OPs.

In view of the above, it must be concluded that the refusal of the application was based on legal and factual reasons which were presented for the first time in the decision under appeal and on which the appellant was therefore given no opportunity to present its comments. The board considers that this failure to comply with the requirements of A 113(1) constitutes a substantial procedural violation and that it is therefore equitable to order the appeal fee to be reimbursed in accordance with R 103(1)(a).

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