23 Feb 2018

T 0183/17 - Rule 116(2) EPC and absence at oral proceedings

Key points

  • In this examination appeal, the applicant had filed a new Main Request one day before oral proceedings before the ED. The ED did not admit the request as not clearly allowable. The Board reviews this decision (as part of their discretionary decision under Article 12(4) RPBA to (not) admit the request in appeal). 
  • The appellant also argued that when considering whether or not the amendments to the claims were "clearly allowable", it was not necessary for the amendments to resolve all minor issues. [] These arguments [are] not persuasive because even if the examining division had been able to recognise the defects as being "minor", which is questionable, the fact that the applicant had chosen not to attend the oral proceedings meant that it would have involved a substantial procedural delay had the examining division postponed the oral proceedings to give the applicant an opportunity to remedy them. "
  • As a comment, it does not seem very elegant to make the later absence at the oral proceedings a factor for admissibility of requests. In my opinion, admissibility of request must be decided on the basis of the state of the file at the date they are filed. Either the request is not admitted as not "clearly allowable", or the request is admitted and not allowed because of the minor issues. 
  • Moreover, the Guidelines H-II 2.7.1. state that "clear allowability" means that "it must be immediately apparent to the examining division that the amendments successfully address the issues raised without giving rise to new ones". 

EPO T 0183/17 -  link


Reasons for the Decision
1. According to Article 114(2) EPC the EPO may disregard facts or evidence not filed in due time and according to Rule 116(2) EPC taken together with the third and fourth sentences of Rule 116(1) EPC to which it refers, new application documents (i.e. in the present case new sets of claims) which are presented after the final date fixed for making written submissions in preparation for oral proceedings need not be considered, unless they are admitted on the grounds that the subject of the proceedings has changed.
2. In the present case, the new main and three auxiliary requests were filed before the examining division on 27 June 2016 [one day before the oral proceedings of 28 June 2016 that the applicant did not attend], which was after the final date that had been fixed for making written submissions in preparation for oral proceedings. In considering whether the amendments were admissible under Rule 116(1) [and (2)] and Article 114(2) EPC, the examining division referred to Guidelines H-II, 2.7.1 and applied the principle that they should first consider whether the late-filed requests were allowable on a prima facie basis (see reasons for the decision, section I). The examining division applied this principle to each of the new requests and found that in each case the amendment was "clearly not allowable under Article 123(2) EPC" (see the conclusions reached at the end of each of the sub-sections A to D of section I of the reasons for the decision). In view of these findings the examining division exercised their discretion regarding these late-filed submissions and did not admit the main and three auxiliary requests filed on 27 June 2016.
3. On appeal the appellant has re-submitted the main and three auxiliary requests which were not admitted by the examining division.
4. According to Article 12(4) RPBA, the Board has the power to hold inadmissible requests which were not admitted in the first instance proceedings.
5. The case law regarding late submissions in general, independent of the preparation of oral proceedings governed by Rule 116 EPC, is summarised in the Case Law of the Boards of Appeal, Eighth Edition, section IV.E.4.3.3(a) under the headings "Filing of amended claims in appeal proceedings", "Ex parte appeal procedure", "Admission of requests already refused by the examining division".
There it is stated that it is the established jurisprudence of the boards of appeal that the power of the examining division to consent to amendments under Rule 137(3) EPC is a discretionary power. According to G 7/93 (OJ 1994, 775) the way in which the examining division should exercise its discretion to allow an amendment of an application must depend upon the circumstances of each individual case, and must also depend upon the stage of the pre-grant procedure which the application has reached. A board of appeal should only overrule the way in which a department of first instance has exercised its discretion if it comes to the conclusion either that the department of first instance, in its decision, has not exercised its discretion in accordance with the right principles or that it has exercised its discretion in an unreasonable way. The exercise of a discretionary power has to strike a balance between, in particular, the applicant's interest in obtaining adequate protection for his invention and the EPO's interest in bringing the examination to a close in an effective and speedy way. Moreover, the exercise of a discretionary power has to be reasoned, otherwise it would be arbitrary (T 246/08).
These considerations apply also when a board of appeal has to review the way in which an examining division has exercised its discretion under Rule 116(1) and (2) EPC in respect of the admission of amendments filed after the final date fixed for making written submissions in preparation for oral proceedings (see the last paragraph of the Case Law, section III.C.4.4).
6. In the present case the examining division applied the criterion of "clear allowability" set out in the Guidelines for Examination, H-II, 2.7.1, which is undoubtedly the right principle to have applied. Furthermore, when applying that criterion they gave an appropriate level of reasoning for the conclusion they reached, even if the conclusion under the "clear allowability" criterion should perhaps have been that the amendments were "not clearly allowable", rather than that they were "clearly not allowable".
7. The appellant argued that in coming to their conclusion the examining division had exercised their discretion unjustly because they had not taken into account that the expression "cable connection" in claim 1 was broad and could be construed either as being the "docking contact point" of the adaptor, as in claim 14, or as being some other unspecified connection. The Board considered these arguments to be of no relevance to the question at issue of whether the examining division had exercised their discretion in accordance with the right principles or had exercised their discretion in an unreasonable way.
8. The appellant also argued that when considering whether or not the amendments to the claims were "clearly allowable", it was not necessary for the amendments to resolve all minor issues. In the appellant's view it was sufficient that the main claims as amended provided a promising starting point and small issues of added subject-matter in a dependent claim, for example, could have been resolved after agreement had been reached on the main claims. These arguments were not persuasive because even if the examining division had been able to recognise the defects as being "minor", which is questionable, the fact that the applicant had chosen not to attend the oral proceedings meant that it would have involved a substantial procedural delay had the examining division postponed the oral proceedings to give the applicant an opportunity to remedy them. This would not have been in accordance with the need for procedural economy.
9. Taking all of these considerations into account the Board of Appeal came to the conclusion that they should not overrule the way in which the examining division exercised its discretion in this case and held the main and the three auxiliary requests that were re-filed on appeal to be inadmissible using the discretionary power afforded by Article 12(4) RPBA.
10. In the absence of an admissible request the appeal had to be dismissed.
Order
For these reasons it is decided that:
The appeal is dismissed.

22 Feb 2018

T 0119/11 - 16 Years to refuse a business method

Key points

  • PCT file in 1999, request for entry EP phase 18.05.2001, oral proceedings ED 27.05.2010, grounds appeal 02.12.2010,  oral proceedings of the Board 06.10.2017, written decision 25.01.2018.
  • "As the application puts it, there is a need for an email system to track [] and store email messages, with other documents, in a database to insure that the email messages retained in the database may be the email messages an organization chooses to retain as their official records  [.] The invention stores what it calls an electronic tag that uniquely identifies an email (or other document). The tag is based on the user's profile and workstation. Based on the information in the tag, emails are monitored for compliance with the organization's policies."
  • The Board applies the Comvik approach: "As claim 1 does not go beyond the definition of features that are strictly necessary to fulfil a non-technical requirement, the combination of features it defines would have been obvious for the technically-skilled person who has the task of fulfilling it."
  • As a comment, perhaps the long pendency of the application is harmless (in view of the small chances of a patent ever being granted). On the other hand, the applicant has paid the renewal fees so there must have been some economic value in the possible monopoly on the claimed method.
EPO T 0119/11 - link


Reasons for the Decision
Background
1. The invention is concerned with emails written in the workplace. There may be legal requirements to retain certain emails, just as there may be personal or business interests in deleting them. Other emails should, for a variety of reasons, be deleted after a given period of time. Organisations need to manage the storage of emails to ensure that those that have to be kept are kept, and those that have to be deleted are deleted.
2. As the application puts it, there is a need for an email system to track, sort, index, manage, authenticate, purge and store email messages, with other documents, in a database to insure that the email messages retained in the database may be the email messages an organization chooses to retain as their official records versus unorganized messages that may have the potential to create a liability for the organization (published application, page 2, lines 15 - 19).
3. The invention stores what it calls an electronic tag that uniquely identifies an email (or other document). The tag is based on the user's profile and workstation. Based on the information in the tag, emails are monitored for compliance with the organization's policies.

21 Feb 2018

T 2100/14 - The essentiality test still alive

Key points

  • Board 3.2.03: "For the reasons detailed hereinafter, the board arrives at the same conclusion when applying the three-point essentiality test, namely that features A and B cannot be omitted in the independent claims (compared to PCT claim 1) without infringing Article 123(2) EPC"
  • As a comment, see my earlier post about T 0046/15 about Board 3.2.04 no longer applying the essentiality test, following T 1852/13 of Board 3.2.05. 
  • The Auxiliary Request is  not admitted. "First it is to be noted that the second auxiliary request is late-filed and that the appellant has neither indicated the amendments made to the claims nor explained where these amendments find support for their disclosure in the application as originally filed. [] These deficiencies alone could lead to the non-admittance of the second auxiliary request." 
  • Furthermore, the AR corresponds to a request withdrawn before the ED. "If the board were to admit such a [previously withdrawn] request, it would be contrary to the main purpose of ex-parte appeal proceedings, which are primarily concerned with examining the contested decision [...]. [The] fact that the request was withdrawn before the issue of a reasoned decision on its merits by the examining division means that reinstating this request upon appeal would compel the board either to give a first ruling on the critical issues, [] or to remit the case to the department of first instance for further examination, which is clearly contrary to procedural economy. It is precisely with the purpose of forestalling these unsatisfactory options that Art. 12(4) RPBA provides the board with the discretionary power to hold inadmissible requests which could have been presented (and examined) (or were not admitted) in the first-instance proceedings."
EPO T 2100/14 -  link


Reasons for the Decision
1. Main request and first auxiliary request
Features A and B of claim 1 as filed or as published in WO-A-2007/006872 (WO):
A) a unit formed by at least a corrugated plate (10) of steel sheet mounted to be supported by steel support beams (14);
B) in which the corrugated plate (10) of steel sheet is mounted in the longitudinal direction of the balcony"
are omitted in claim 1 of both the main and the first auxiliary requests.
Corresponding features of independent method-claim 10 as filed/published have also been deleted in independent claim 10 of both the main and the auxiliary requests.
1.1 In its decision to refuse the application, the examining division arrived at the conclusion that the omission of features A and B in the independent device and method claims constituted a violation of Article 123(2) EPC by applying the essentiality test referred to in the EPO Guidelines H-V, 3.1.
1.2 For the reasons detailed hereinafter, the board arrives at the same conclusion when applying the three-point essentiality test, namely that features A and B cannot be omitted in the independent claims without infringing Article 123(2) EPC (see Case Law of the Boards of Appeal, 8th edition, 2016, II.E1.1.2.4, page 409).

20 Feb 2018

T 0763/15 - Not admitting AR without debate

Key points

  • The OD did not admit an auxiliary requests. However, in doing so the right to be heard was violated. This is a substantial procedural violation. 
  • " In the present case, the board cannot see any indication that the appellant was allowed to argue during the oral proceedings on the issue of admissibility of the auxiliary request 2 filed in writing on 5 November 2014. "
  • For this reason alone [] the board comes to the conclusion that the patentee's right to be heard had been violated. Although an effective and efficient conduct of oral proceedings is subject to the discretionary power exercised by the chairman in oral proceedings with regard to specific issues, it must nevertheless guarantee that the fundamental procedural rights of each party in adversarial proceedings, i.e. the right to a fair and equal treatment, including the right to present comments in oral proceedings are respected (Articles 113(1) and 116 EPC).


EPO T 0763/15 -  link

3. Alleged procedural violations
3.1 The appellant alleges that its interests in defending its case had been seriously damaged in opposition proceedings in several respects (alleged procedural violations 1 to 3). Allegedly, the decision not to admit e.g. the auxiliary request 2 filed in writing on 5 November 2014 into the opposition proceedings was taken without giving the patentee the opportunity to argue on its admissibility (alleged procedural violation 1), thus violating the party's fundamental right to be heard.
3.2 According to the established jurisprudence, the right of any party for oral proceedings to be held on request and to present its case orally is absolute and, with respect to the party's right to be heard on its case, a more specific embodiment of the general principle enshrined in Article 113(1) EPC. Moreover, the parties' absolute right to be heard in oral proceedings, Articles 113(1) and 116(1) EPC, is not restricted to new and substantial arguments which have not yet been presented in writing (see R 3/10, Reasons 2.11).

19 Feb 2018

T 2450/16 - No re-establishment

Key points

  • The Board refuses a request for re-establishment in this examination appeal wherein no Notice of appeal was filed (the appeal fee was paid). The representative had delegated the filing of the appeal to an assistant, who forgot about the need to file a Notice of appeal. 
  • " The board holds that, at least in the present case, the preparation of a notice of appeal by the representative's assistant []  cannot be considered to constitute a routine task that could rightfully be entrusted to her by a representative." 
  • The representative submitted as argument that Online Filing (referred to as epoline®) was not particularly helpful. 
  • "She was, however, confronted with completing this task in epoline®, which contained no clear indications concerning the initiation of an appeal procedure, apart from the payment of the appeal fee. In this respect the board notes that epoline® mainly deals with the electronic filing of documents with the EPO. In the board's understanding, it is not an electronic guide supposed to convey knowledge about the right document(s) to file in a given situation. Rather, the use of epoline® presupposes such knowledge. In other words: epoline® could by no means replace the need for the above-mentioned instructions from the representative." 
  • I suppose that the real issue was that the assistant could (and did) book off the time limit on her own, without cross check, but the Board does  not comment on this. 


EPO T 2450/16 -  link

Summary of Facts and Submissions
I. The applicant requests re-instatement (re-establishment of rights) under Article 122 EPC in respect of the period for filing the notice of appeal against the decision of the examining division dated 22 June 2016 refusing European patent application No. 01 924 569.5.
II. The appeal fee was paid via epoline® on 18 August 2016. The grounds of appeal were filed via epoline® on 7 October 2016. On 13 October 2016 the EPO informed the applicant's representative by telephone that no notice of appeal had been filed.
[...]
Reasons for the Decision
Pursuant to Article 122(1) EPC,
an applicant for ... a European patent who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit vis-à-vis the European Patent Office shall have his rights re-established upon request if the non-observance of this time limit has the direct consequence of causing ... the loss of any other right or means of redress.
The request for re-establishment of rights of an applicant with a professional representative acting on its behalf is only allowable if both the applicant itself and its representative have met the necessary standard of care (see T 1962/08, Reasons 5.1).
Whether or not these conditions, together with the concomitant requirements of the Implementing Regulations, are met and the request for re-establishment is to be granted (cf. Article 122(2) EPC) is the subject of the reasons for the present decision, which are given below.

16 Feb 2018

J 0011/17 - PCT entry with RE but not FP

Key points

  • This a Euro-PCT application with as applicant and inventor a person living in Bahrein. The applicant tried to carry out entry into the European phase himself, but he did not pay any fees.
  • Only after quite some time, a professional representative (with office in Macedonia; possibly grandfathered) filed a request for re-establishment and paid the filing fee, search fee, designation fee and examination. However, the further processing fees were not paid. The FP fees were paid after the two month time limit for RE.
  • Hence the Legal Board rejects the requested RE as inadmissible because it was filed late. The request is deemed to be filed when the omitted act was completed, i.e. the FP fees were paid as well. The applicant had some "unusual" argument about the FP fees being paid within the one year period for requesting RE, but to no avail. 
  • It is of course positive that there are inventors and applicants from Bahrein, and representatives in Macedonia, but this does not seem to have been a particularly fruitful case. 
  • Question: if the 31-months time limit expired 8 June 2015, can the EPO keep the third renewal fee paid on 21 September 2015? (as seems to be the case, according to the register?). In addition, there was a 2nd request for RE filed on 29 August 2017, relating to payment of the fourth renewal fee (the EPO sent out a communication about that fee, for some reason, see also Rule 514) EPC). Are any fees in connection with request to be refunded? (as may already been done, the documents tab in the online register is a mess for this application)

EPO J 0011/17 - link

Summary of Facts and Submissions
I. The appeal is directed against the decision of the Receiving Section dated 6 March 2017, in which the applicant's request dated 12 May 2016 for re-establishment into the time limit for further processing of International application PCT/IB 2013/054 458 was refused. The Receiving Section decided that the request for re-establishment was inadmissible for failure to pay the fee for further processing within the prescribed time limit.
II. The appellant lodged an appeal against this decision. The appellant requests that the decision of the Receiving Section be set aside and the request for re-establishment of rights be granted. No request for oral proceedings has been submitted.
III. With its communication dated 15 November 2017 the Board informed the appellant of its preliminary opinion that the appeal was admissible but not allowable. The Board regarded the request for re-establishment of rights to be inadmissible. The appellant replied by letter dated 27 November 2017.
IV. The appellant's first line of argument can be summarised as follows:
(a) The 31-month time limit for entry of the international application into the European phase expired on 8 June 2015. The time limit for requesting further processing expired on 24 September 2015.
(b) The removal of the cause of non-compliance with the latter time limit was the financial ability of the applicant to pay the EPO fees which it did not have until the filing of the request for re-establishment of rights on 12 May 2016. The only condition which was necessary to be fulfilled for filing a valid request for re-establishment of rights was that the applicant pays the fee for the request for re-establishment of rights at the moment of filing that request. That he had done.
(c) There is a distinction between the two-month period and the one year period referred to in Rule 136(1), first sentence, EPC. The former relates to the removal of the cause of non-compliance and is thus "subjective"; and it concerns one procedural action only. The latter is "objective" and concerns the plurality of payment obligations (in the present case payment of the EPO fees) deriving from the procedural action. Hence, the fee for further processing has to be paid only within one year of the expiry of the unobserved time limit.
(d) The fee for further processing was paid on 8 September 2016 and thus prior to the expiry, on 24 September 2016, of the period which the appellant regards as the relevant one, namely the period of one year from the unobserved time limit. The request for re-establishment of rights was thus admissible.
V. The appellant's second line of argument can be summarised as follows: The EPO had informed the appellant in its communication dated 14 July 2015 concerning the appointment of a professional representative that if the applicant did not appoint a European professional representative within two months of notification of the communication, the application would be refused. Of the three acts which the applicant had omitted (failure to pay the fees on entry into the European phase, non-appointment of a professional representative, failure to request further processing) it would be the earliest which would lead to a refusal of the application. If the EPO had correctly applied its own regulations it would have refused the application immediately after 24 September 2015 for failure to appoint a professional representative. There was thus no "space at all for bringing the EPO Decision dated 06.03.2017," and this decision of the Receiving Section should be set aside.
Reasons for the Decision
1. The appeal is admissible.
2. Rule 136(1), first sentence, EPC, provides that "Any request for re-establishment of rights under Article 122, paragraph 1, shall be filed in writing within two months of the removal of the cause of non-compliance with the period, but at the latest within one year of expiry of the unobserved time limit."
3. The period of one year is not an alternative to the two-month period as construed by the appellant. Instead, the provision refers to "but at the latest". According to the rule the request has to be filed within two months of the removal of the cause of non-compliance, and no request can be filed more than one year after expiry of the unobserved time limit.
4. The omitted act under Rule 136(2) EPC was to request further processing. Pursuant to Rule 135(1) EPC, further processing is requested by paying the fee for further processing; in addition, the omitted act under Rule 135(1) EPC (here payment of fees due on entry into the European phase) must be completed within the period of two months for making the request for re-establishment of rights (see Rule 136(2), second sentence, EPC). In the present case, the request for re-establishment was filed on 12 May 2016, but the fee for further processing was only paid on 8 September 2016. Thus, the requirement of Rule 136(2), second sentence, EPC is not fulfilled. The Receiving Section was thus correct in rejecting the request for re-establishment of rights as inadmissible.
5. The Board cannot see any basis for the appellant's argument that the one-year period referred to in Rule 136(1), first sentence, EPC relates, inter alia, to the payment of the fee for further processing and that this payment was thus made in due time. The ordinary meaning of Rule 136(1), first sentence, EPC in its context is clear, and is as set out in point 3 above.
6. The Board considers that this outcome is not changed by the appellant's arguments concerning its failure to appoint a professional representative. The appellant's failure to appoint a professional representative did not have the effect that the Receiving Section had to refrain from issuing a decision on the request for re-establishment of rights. Article 90(5) EPC provides that the European patent application "shall be refused" unless the deficiencies noted are remedied (or a different remedy is foreseen in the Convention). Thus, the act of refusing the application is a positive one by the EPO. This can be distinguished from the legal effect of deemed withdrawal, where no such act is required. As the EPO did not refuse the application at hand, but the application was deemed withdrawn due to the non-payment of the required fees, the request for re-establishment into the period for further processing was as such permissible, and the Receiving Section was able to decide on it.
Order
For these reasons it is decided that:
The appeal is dismissed.

15 Feb 2018

T 0855/15 - The closest prior art

Key points

  • In this examination appeal, the applicant argued that the Examining Division had not properly chosen the closest prior art document, because the used document would be remote from the invention. 
  • The Board  notes that "if a piece of prior art is "too remote" from an invention, it should be possible to show that the invention is not obvious to a skilled person having regard to this piece of prior art"
  • "Secondly, the board disagrees with the appellant's suggestion that it is relevant for the question of inventive step whether or not the "skilled person would [...] select" a piece of prior art "as a starting point to arrive at the invention" [] Article 56 EPC requires the assessment of whether an invention would be obvious to the skilled person "having regard to the state of the art". For this assessment, the deciding body will select one or more documents for consideration. However, no argument is required as to whether the skilled person would select a document. "
  • As a comment, on the EQE it is important to take the right document as the closest prior art. 


EPO T 0855/15 - link

8. As regards the appellant's argument that the chosen "closest prior art" is so "remote" from the invention that the skilled person would not select it (see point 3 above), the board makes two additional observations.
8.1 Firstly, the board considers that the "remoteness" of a piece of prior art from the claimed invention does not, in itself, rule out an assessment of inventive step in view of that prior art. If a piece of prior art is "too remote" from an invention, it should be possible to show that the invention is not obvious to a skilled person having regard to this piece of prior art (see Article 56 EPC, and T 1742/12, point 9 of the reasons).
8.2 Secondly, the board disagrees with the appellant's suggestion that it is relevant for the question of inventive step whether or not the "skilled person would [...] select" a piece of prior art "as a starting point to arrive at the invention" (see the grounds of appeal, page 4, paragraph 3). Article 56 EPC requires the assessment of whether an invention would be obvious to the skilled person "having regard to the state of the art". For this assessment, the deciding body will select one or more documents for consideration. However, no argument is required as to whether the skilled person would select a document. In fact, the board considers that a consideration of what the skilled person would do, in particular whether the skilled person "would select" a document, in order "to arrive at the invention as claimed" would amount to hindsight reasoning, because the skilled person would have to be assumed to know the invention before an argument could be made as to what he would do in order "to arrive at" it.
Inventive step
9. The claims recite a software architecture defined in in terms of layers comprising "automation", "engine" and "platform" objects. These objects may be thought of as representing (i.e. modelling) a "plant", but no control of the plant seems to be implied by the claimed subject-matter. The modelling is not specific to a particular plant or type of plant or any specific "process control" and "manufacturing information" task in that context.
9.1 The same applies to the security model. The claims refer to a "set of security groups", each comprising "automation objects" having "attributes" with "security classifications", a "set of user roles", and an associated way of granting "access to an attribute of an object", but they fail to specify what the objects, attributes, accesses or roles are or how they may be "associated with a plant process" as the preamble of the claim indicates. As mentioned above, this hardware independence is intentional (see the description, page 6, lines 8-16, and point 3.3 above).
9.2 Thus the invention is not concerned with any specific industrial process - or control thereof - but rather with modelling or programming a control system (and its access control) in such a way that reconfigu­ration (i.e. re-programming) becomes simple (or "easily designed and altered for customized use", as the application itself puts it). The board considers it questionable whether this goal (i.e. simplicity or speed of design, (re-)configuration, or customisation) and its consequences (such as reduction of system idle time, see the description, page 2, lines 12-14) are plausibly achieved by the claimed system and, furthermore, how it could be established (e.g. quantified and measured) whether they are achieved. Moreover, the board follows its earlier jurisprudence, according to which providing a programming system does not solve a technical problem merely because it makes the programmer's task easier (see e.g. T 1630/11, points 6 to 8 of the reasons).
10. The board thus concludes that the claimed invention lacks an inventive step over the common general knowledge in the art because it does not solve a technical problem, Article 56 EPC 1973.
Order
For these reasons it is decided that:
1. The appeal is dismissed.
2. The request for reimbursement of the appeal fee is refused.