T 0600/21 - Admissibility, complexity, and matters the OD did not arrive at

Key points

• The Board decides not to admit AR-3 in this opposition appeal.
• The proprietor filed these requests in their reply to the appeal of the opponent. The Board in machine translation notes that: "it did not explain which objections the respective changes address and why the changes are suitable for overcoming the objections raised against the main application. Without this information, the requirement of Article 12(3) RPBA that the response to the complaint must contain the respondent's complete complaint is not fulfilled, unless the changes are self-explanatory in this respect. However, this is not the case." 
• The amendment is limiting the claimed detergent composition to a solid detergent composition.
• The Board: "solid dishwashing detergents are undisputedly part of the state of the art, so it is not self-explanatory why the inclusion of this feature eliminates the objection of lack of inventive step." (the higher ranking request was rejected as obvious over D12).
• The Board, however, also acknowledges that D12 is about liquid detergents, not about solid detergents. The Board does not explain why it is not self-evident that an amendment that changes the closest prior art is not a suitable amendment in reply to an inventive step attack.
• The Board notes that if these auxiliary requests are admitted, then D25 filed by the opponent also has to be admitted, and inventive step starting from D25 has to be discussed. This would run against procedural economy and would be a further reason for not admitting the auxiliary request under Article 12(4) RPBA.
• The Board does not indicate that the amended claim would be obvious starting from D12. In fact, the need to consider inventive step starting from D25 speaks against this, it seems to me.
• The Board does not indicate that the amended claims should have been submitted in the first instance proceedings under Art. 12(6).
• The Board does  not (or at least not explicitly) acknowledge that Art. 12(4) fifth sentence, mandates the consideration of all three of the following factors: "The Board shall exercise its discretion in view of, inter alia, (i) the complexity of the amendment, (ii) the suitability of the amendment to address the issues which led to the decision under appeal, (ii) and the need for procedural economy." (emphasis and numerals added).
• The Board does not consider, or at least not explicitly, factor (ii), which is the only factor in the list that is by its nature in favour of admitting any amendment (i.e. a high score on factor (ii) is a reason for admitting the amendment, a high score of factors (i) and (iii) is a reason for not admitting the amendment).
• The analysis that the responsive filing of D25 by the opponent can be considered under the factor complexity (factor i) seems in line with Müller and Mulder's Proceedings before the European Patent Office, 2^nd ed., 2020, p.125.  
• The OD found the set of claims inventive over D12. So, the OD would not have arrived at the amended set of claims even if AR-3 had been filed before the OD, and the Board would have no reasoning by the OD to review, it seems to me. The filing of AR-3 at the beginning of the appeal, in that sense, does not add procedural complexity, compared to the case where it would have been filed before the OD. Moreover, the OD would have no reason to consider inventive step over D25 for a request that it would not have arrived at had the request been pending in the first instance proceedings (at least the OD would not have to include any reasoning on that point in the decision because the OD considered a higher-ranking request to be allowable). So, introducing D25 in appeal does not seem to increase complexity. 
• As I understand it, AR-3 was the highest-ranking request after the set of claims held allowable by the OD. 
• The application was filed in 2005 as a PCT application and granted in 2018.

• EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 1656/17 - Dealing with a partiality objection

Key points

• This decision was issued in October 2023 after a five-year appeal procedure (but with a separate decision on a partiality objection). The grant was in 2014. The PCT filing date is in 2008. A petition for review is pending.
• The first oral proceedings took place on 5 July 2022. The Board concluded that claim 1 was obvious over D10. The oral proceedings were adjourned to 14 July 2022, as vico, with the consent of the parties.  The appellant/proprietor withdrew his consent on 8 July. Oral proceedings were resumed on 21 October 2022 after a new summons. 
• The Board refused to reopen the debate, giving rise to a first objection under Rule 106.
• Two further objections were raised under Rule 106.
• " The oral proceedings were interrupted at 17.49 hrs for deliberation by the board on the admittance of documents D38a, D46, D47 and D48.
• " At 18.20 hrs, one of the respondent's representatives entered the room where the board was deliberating and closed the door behind him ("the room incident"). He asked about the timetable of the oral proceedings on that day as the respondent's representatives had to catch a plane to London. The chair immediately asked him to leave the room as the board was deliberating, adding that the parties would be called in in a few minutes. The representative immediately left the room at 18.21 hrs." 

• A new objection under Rule 106 was filed by the proprietor.

• " On 27 October 2022, the board issued summons to in-person oral proceedings, according to which the oral proceedings were to be resumed on 11 January 2023."  These summons were for three days.

• " By letter dated 28 December 2022, the appellant raised objections of suspected partiality under Article 24(3) EPC against the members of the board." 

• " On 11 January 2023, at 14.05 hrs, the oral proceedings before the board in its original composition were interrupted and an alternate board was appointed. After the alternate board decided [on 12 January, with oral proceedings before the alternate Board on 11 and 12 January] that the objection of suspected partiality against the members of the board in its original composition be refused, the oral proceedings before the board in its original composition were resumed on 13 January 2023, at 9.02 hrs. 

• " At 09.04 hrs, shortly after the resumption of the oral proceedings before the board in its original composition on 13 January 2023, the appellant filed the following objection under Rule 106 EPC" 

• " At 16.53 hrs, the appellant filed a further objection under Rule 106 EPC ("objection 6"), which reads as follows: ..." 

• The Board, on 13 January 2023, dismissed the appeal.

• The Board issued the decision, 173 pages in writing, in October.

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• EPO 

The link to the decision is provided after the jump.

T 2175/15 - The opponent submits five partiality objections

Key points

• Three interlocutory decisions on partiality were issued in September 2023 in this opposition appeal case, where the opponent has, up to now, filed five partiality objections. 
• The decisions are anonymised, but the application number is easy to find and the file is public (some letters are redacted). 
• The appeal was filed in November 2015, the statement of grounds was in January 2016, and the reply was filed in May 2016, followed by the silence of the Board until April 2019: summons for oral proceedings to be held on 20 March 2020 (bad luck). 
• Oral proceedings were postponed and finally held by vico in January 2021. The Board admits auxiliary requests and decides that the proceedings continue in writing.
• The opponent, represented by a professional representative of a German firm, files a first partiality objection in April 2021, followed by a second one when the Board, in original composition, outlines the framework for admissibility. The second objection is rejected by the Board in alternate composition.  The Board, in the original composition, issues a new summons with a preliminary opinion on the remaining issues of the admissibility first partiality objection and the apportionment of costs (the patentee had withdrawn the appeal). The opponent files a third partiality objection. Again, a Board in alternate is then formed, and the opponent files a fourth partiality objection against one of the members of the Board in alternate composition. A replacement Board member was appointed, and the opponent filed a fifth partiality objection. A further replacement member is appointed. Oral proceedings are held in June 2023 before the Board in alternate composition.
• The second objection was dismissed in  April 2022, and now the 3rd, 4th and 5th. 
• The decision on third objection was taken by Board members N, D, H; the decision on the fourth objection by K, D and H, the decision on the fifth objection by G, D and H, all on the same day. Must have been an interesting set of oral proceedings on 23 June 2023. However, the minutes are not visible in the online file.
• The register shows that a petition for review R 16/22 is pending against the decision of April 2022, though the documents about that petition are not visible in the online file. 
• The appeals were withdrawn on 4 and 7 July 2022 but the opponent maintained its request for cost apportionment. 
• There was some litigation about the national German patent. I understand that there was some German  case law that a preliminary injunction could not be awarded by German courts until the validity of the patent was proven in opposition (or nullity) proceedings (see CJEU case C-44/21 of April 2022). So, possibly, the opponent had no clear interest in a swift end to the opposition proceedings at the relevant times.

EPO 

The link to the decision is provided after the jump.

T0481/21 - OD selects CPA, other attacks not abandoned

Key points

• The opponent appeals.
• " the appellant formulated an objection against the then pending main request starting from document D1 as the closest prior art. The proprietor argued that this objection should not be admitted because the only document cited as closest prior art in the appealed decision was D5, so this objection was not part of the appealed decision under Article 12(2) RPBA.
• "The Board however notes that document D1 was extensively discussed both under novelty and under inventive step in the first instance proceedings. "
• "It is apparent from the contested decision and the minutes that at the oral hearing document D1 was discussed in order to assess the novelty of the method and the product claims. As also explained in the minutes, D5 was however considered as representing the closest prior art because it addressed the same technical problem and had certain features in common with the invention."
• "Since there is no indication that the inventive step objections starting from D1 discussed during the written proceedings were explicitly or implicitly abandoned at the oral hearing, they are effectively part of the first instance proceedings, implying that the appealed decision was at least implicitly based on them as required by Article 12(2) RPBA. In particular, the Board considers that the decision to contemplate D5 as the closest prior art implicitly involves the selection of D5 over D1 as closest prior art, which does not imply that the objections starting from D1 were no longer maintained, but simply that it was decided (in view of the conclusions on novelty in view of D1) that D5 represented a more promising springboard. Since the inventive step objection is considered to be part of the first instance proceedings, there is no basis not to admit this objection under Article 12(4) and (6) RPBA."
• The patent is revoked.

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

J 0003/23 - (Not) remedying formal deficiencies in the drawings

Key points

• An application is refused because a deficiency in the drawings was not corrected in time in reply to a communication of 24.08.2021 under R.58, setting a two-month time limit. 
•  "On 15 December 2021, the appellant (applicant) submitted ten pages with the corrected ten drawings".
• "By decision of 21 December 2021 (which was handed over to the EPO postal service on 14 December 2021), the Receiving Section refused the application pursuant to Article 90(5) EPC because the deficiencies had not been corrected in due time."
•  As a comment, I think a fair and reasonable application of the EPC would be to make the decision based on an ex nunc examination, i.e., based on the file's status as it was on the decision day. In other words, the corrected drawings could and should have been accepted. However, the current position in the case law might be different.
• The applicant requests re-establishment. The Receiving Section refuses the re-establishment.
• Note that under J 18/08, the applicant could also have filed an appeal and then filed the drawings (again) with the Statement of grounds as a safe remedy (as I understand it, the principle to J18/08 applies to all refusals of applications for formal deficiencies).
• The applicant could also have filed a divisional application during the period for filing an appeal, which is probably cheaper (only the filing fee; the search fee will be refunded in the parent case)
• The applicant appeals the refusal of the re-establishment.
• The appeal is inadmissible for lack of substantiation.
• By way of obiter remarks, the Board also indicates that the appeal is not allowable even when reviewing the applicant's submissions before the Receiving Section.

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 0273/23 - Purpose of the method

Key points

• The decision in this appeal against a refusal was taken rather fast: statement of grounds filed 08.02.2023 (by a professional representative), oral proceedings held 27.10.2023. The applicant is a natural person (and a patent attorney).
• Claim 1 in machine translation: "Method for positioning an art object (1) on a flowing body of water, wherein the art object (1) comprises two or more buoyant elements (3, 3 '), and at least one of the elements (3) is anchored at a position defined in the direction of flow and the other elements (3') are either also anchored or connected to one element (3)."
• The applicant argues that claim 1 is novel over D5 because in D5, the art object is positioned in a bay, which is not a flowing body of water. 
• Of note (in machine translation): "The CNN report (D5) on the artistic work "SOS (Safety Orange Swimmers)", which has been freely available to the public on the Internet since October 13, 2016, undisputedly constitutes prior art in accordance with Article 54(2) EPC represents. This report was introduced into the appeal proceedings by the Chamber with the notification pursuant to Article 15(1) RPBA dated April 12, 2023.
• The Board: "The claimed method according to claim 1 mentions positioning in flowing water only as part of a purpose of the method ("for positioning an art object on a flowing body of water"). The procedure is therefore not limited further than by the suitability in this regard. It is therefore anticipated by any other positioning method of an art object, which is inherently suitable for being used for positioning in or on a river."
• Compare Guidelines, F-IV, 4.13: "Where the stated purpose defines the specific application of the method, this purpose requires additional steps which are not implied by or inherent in the other remaining steps defined in the claim, and without which the claimed process would not achieve the stated purpose. Hence a method claim that defines a working method which, for example, commences with such words as "Method for remelting galvanic layers", the part "for remelting ..." is not to be understood as meaning that the process is merely suitable for remelting galvanic layers, but rather as a functional feature concerning the remelting of galvanic layers and, hence, defining one of the method steps of the claimed working method (see T 1931/14 and T 848/93)."
• "On the other hand, where the purpose merely states a technical effect which inevitably arises when carrying out the other remaining steps of the claimed method and is thus inherent in those steps, this technical effect has no limiting effect on the subject-matter of the claim. For example, a method claim concerning the application of a particular surface active agent to a specified absorbent product and defining its purpose as "for reducing malodor" in terms of an intended technical effect is anticipated by a prior-art document describing a method having such suitability "for reducing malodor" although not mentioning the specific use"
• The Board cites T 1931/14 and reasons, in machine translation: "a purpose (here the positioning of an object in a flowing body of water) does not have a restrictive effect if this effect inevitably arises when exercised of the remaining steps of the claimed method. However, anchoring an object ultimately always leads to a fixed position of this object, so that no further (implicit) features are associated with the anchoring beyond the positioning of the object."
• The claim is held to be not novel.
• As a comment, it's not clear to me why the method is not considered to involve an implicit step of placing the art object in a flowing body of water. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

  

T 0229/18 - The Chair retires before the written decision is given

Key points

• The decision was given during oral proceedings on 07.10.2021. Minutes were issued on 22.10.2021.
• A notice about a transfer of the case to another Board was issued on 12.07.2022.
• A party enquires in 2022 and later in September 2023 about when the written decision will be issued.
• By that time, the chair had retired (in June 2022). The other party proposes that the Board apply Art. 8(3) RPBA, which states that if the Chair is unable to act, the longest-serving member shall sign the decision.
• The Board issued a Communication on 23.10.2023, apologizing for the undue delay and mentioning "unfortunate circumstances and the productivity objectives imposed on the boards of appeal".
• The decision in PDF was authenticated by the legal member instead of the Chair.
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EPO 

The link to the decision is provided after the jump.