18 May 2018

T 1003/15 - Re-examination or review?

Key points

  • In this opposition appeal, the opponent filed new documents D4 and D5 with the Notice of appeal. In response, patentee restricted the claims. 
  • However, the first question is admissibility of the appeal. The opponent did not attack the finding of the OD that the claims at issue were novel and inventive over D1-D3. According to the Board, the appeal is admissible because the opponent had maintained in appeal that ", in view of the absence of this essential feature from claim 1 of the allowed claims, the problem addressed by the patent was not solved across the whole breadth of the claims", therefore the claims lacked inventive step. This line of argument is not further discussed in the appeal, in fact the Board only decides to admit D4 and D5 and the case is remitted to the OD.
  • In my view, it is not very satisfying that admissibility of the appeal is based on an argument that is not further discussed. If the Boards are strictly a review instance, then D4 and D5 should  not be admitted. If the Boards are more of a re-examination panel, then D4 and D5 should themselves make the appeal admissible. The reason for the requirement that the Statement of grounds contains at least one reason for setting aside the impugned decision, as required by Rule 99(2) EPC, is that otherwise the appeal makes no sense. In this decision, the OD's decision is set aside based on D4 and D5, therefore the filing of those documents with the Statement of grounds should be sufficient for admissibility. 



EPO T 1003/15 -  link

Reasons for the Decision
1. Admissibility of the appeal
The appellant [opponent] did not make any comment in its statement of grounds of appeal as regards the decision of the opposition division over the relevance of documents D1-D3 which were discussed in the decision of the opposition as regards novelty (D1, D3) and inventive step (D2).
The appellant however maintained its objections as to the breadth of the claims and the absence of an essential feature in claim 1 of the claims maintained by the opposition division, namely the absence of a surfactant. According to the appellant, in view of the absence of this essential feature from claim 1 of the allowed claims, the problem addressed by the patent was not solved across the whole breadth of the claims, which failed to meet the requirements of Article 56 EPC.
An appeal by an opponent is admissible if the grounds of appeal contain at least one reason for setting aside the impugned decision, as required by Rule 99(2) EPC. This is the case with the present appeal with objections already presented during the opposition proceedings as regards the resolution of the problem over the whole scope of the claims. The statement of grounds of appeal of the opponent appears thus to constitute an answer to the decision of the opposition division and the appeal appears to be admissible.
2. Admission of documents D4 and D5 into the proceedings
Documents D4 and D5 are new documents, that were filed in the appeal proceedings by the appellant with its statement of grounds of appeal. Said new evidences D4 and D5 were therefore not present and discussed during the opposition proceedings.
According to Article 12(4) RPBA, a board of appeal has the power to hold inadmissible facts, evidence or requests which inter alia could have been presented in the opposition proceedings, which is obviously the case of D4 and D5.
However, in the present case, and in response to the statement of grounds of appeal and of the submissions of the new documents D4 and D5, the respondent submitted also new sets of claims, as main and auxiliary requests. The subject-matter of said new requests is substantially modified and more restricted that the subject-matter of auxiliary request 1 which was considered to meet the requirements of the EPC by the opposition division. The submission of these new requests constitutes an explicit response to the new documents, and a implicit recognition of their prima facie relevance for the claims which were found to meet the requirements of the EPC during the opposition proceedings.
In parallel to the submissions of the new main and auxiliary requests, the respondent did also not object the admission of the new documents D4 and D5 into the appeal proceedings.
It appears also immediately obvious that said documents D4 and D5 are indeed prima facie relevant, not only for the claims which were found to meet the requirements of the EPC during the opposition proceedings, but also at least for the claims of the main request submitted in the appeal proceedings, as regards novelty and/or inventive step.
The Board exerts thus its discretionary power and decides to admit documents D4 and D5 into the proceedings (Article 12(4) RPBA).
3. Remittal to the opposition division
The discussion on novelty and inventive step of the new main request over the newly submitted documents D4 and D5 constitutes a new case which was not discussed during the opposition proceedings.
Although Article 111(1) EPC does not guarantee a party an absolute right to have all the issues in the case considered by two instances, it is well recognised that any party should, whenever possible, be given the opportunity to said consideration by two instances of the important elements of the case. The essential function of an appeal proceedings is to consider whether the decision under appeal is correct. Hence, a case is normally remitted if further criteria of patentability have not yet been examined and decided in the proceedings leading to the decision under appeal, or as in the present new documents and new requests have been filed.
Hence, the Board considers it appropriate to remit the case to the examining division for further prosecution on the basis of the main request.
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the Oppposition division for further prosecution.

17 May 2018

T 1266/16 - Declaration inventors not credible

Key points

  • In this opposition appeal the Board decides about novelty of a method claim which requires that thiourea is used with less than 1.0 wt.% Calcium.
  • " The appellant [patent proprietor] submitted two declarations (D29, D30) by the inventors of the patent in suit stating that "during the development of the invention, thiourea was obtained from a number of different commercial suppliers. The Ca content in the commercially available industrial thiourea from some of these suppliers was found to be more than 1.0 wt%"."
  • | Notwithstanding that both declarations are word-for-word identical regarding thiourea purity, they do not contain any specific detail with respect to the suppliers they refer to, let alone any data regarding purchase or analysis performed. As such, these statements, devoid of any corroborating evidence, cannot be considered as proof of the appellant's argument." 



EPO T 1266/16 - link


10.1 Commercially available thiourea
There is no evidence on file which could show that thiourea with a higher content of calcium than [the maximum content specified in] claim 1 was commercially available at the filing date of D1.
The appellant [patent proprietor] submitted two declarations (D29, D30) by the inventors of the patent in suit stating that "during the development of the invention, thiourea was obtained from a number of different commercial suppliers. The Ca content in the commercially available industrial thiourea from some of these suppliers was found to be more than 1.0 wt%".
Notwithstanding that both declarations are word-for-word identical regarding thiourea purity, they do not contain any specific detail with respect to the suppliers they refer to, let alone any data regarding purchase or analysis performed. As such, these statements, devoid of any corroborating evidence, cannot be considered as proof of the appellant's argument.
In contrast, the respondents have submitted ample evidence that thiourea having a very low calcium content was not only available but standard before the filing date of D1. D4 refers to 98.0% pure thiourea having an ignition residue (sulfate) of 0.01% of lower, which includes not only calcium, but also sulfate conterions and other cationic impurities; D5 and D6 also refer to 99% pure thiourea (see partial translations); D10 relates to 99.7% pure thiourea having less than 0.1% sulfate-ash; D14 discloses 99.0% pure thiourea having less than 0.10% ash.
This argument of the appellant is thus not convincing.

16 May 2018

T 2135/15 - Board spells out what the ED should do

Key points

  • In this examinatin appeal, the Board finds that claim 1 does not lack essential features, as the ED had decided. Furthermore, "[t]he Board is unable to concur with the reasoning of the examining division with respect to inventive step" because "the reasoning ignores the presence in claim 1 of the feature that the modified sugar beet pectin contains a water-insoluble component". 
  • " Hence, none of the objections raised by the examining division against claim 1 are found to be convincing." 
  • However, the Board then gives very detailed instructions for the further examination of the case after remittal.
  • " Contrary to D1 and D2 relied upon in the contested decision as starting point for assessing inventive step, other documents cited in paragraph [0004] of the present application, in particular [patent numbers], which were also cited in the written opinion of the ISA, appear to disclose a [the key feature of claim 1]. The Board then notes that there are multiple independent lcaims, and clarity issues in claim 1, as well as a product-by-process claim that might be unclear.



EPO T 2135/15 - link

Reasons for the Decision
1. Claim 1 of the main request, which was found by the examining division to contravene the requirements of Articles 84 and 56 EPC, is based on a combination of claims 1, 3 and 4 as filed. The Board is therefore satisfied that claim 1 of the main request meets the requirements of Article 123(2) EPC.
Lack of essential features (Article 84 EPC)
2. Article 84 EPC requires that the claims are clear, concise and supported by the description. According to established case law of the boards, Article 84 EPC is to be interpreted as requiring that an independent claim must recite all the essential features which are necessary for clearly and completely defining a particular invention (see opinion of the Enlarged Board of Appeal G 1/04, point 6.2.4 for the reasons). All features which are necessary for solving the technical problem with which the application is concerned have to be regarded as essential features (see Case Law of the Boards of Appeal, 8**(th) edition 2016, II.A.3.2). Hence, if the claims do not comprise a feature which is described in the application as essential, or which is disclosed in the description as being indispensable for solving the problem defined in the application, then an objection under Article 84 EPC may properly arise (see decision T 2001/12 of 29 January 2015, point 4.2 of the reasons).
2.1 Claim 1 of the pending main request is directed to a modified sugar beet pectin. According to paragraph [0006] of the application as filed, in line with paragraphs [0001] and [0004] the present invention aims at providing a modified sugar beet pectin that can provide an emulsion with excellent properties, particularly emulsion stability, compared to known generally available sugar beet pectin.
The claim does not contain the definition of the heating step at 60 to 100°C of the aqueous dispersion of sugar beet pectin, a step which was considered to be essential by the examining division.

15 May 2018

T 2154/13 - Not attending OP before OD

Key points

  • The patent proprietor did not attend oral proceedings before the OD, and then filed new auxiliary requests in appeal. The Board does not admit the requests.
  • " The Board considers that non-attendance at oral proceedings before the opposition division does not in itself justify the submission of new requests in appeal proceedings as a (presumed) reaction to the course of the oral proceedings in which the submitting party deliberately did not participate." 
  • "Following the principle according to which the appellant should be prevented from seeking unjustified procedural advantages in disregard of procedural economy and to the disadvantage of other parties (nemo auditur propriam turpitudinem allegans), the Board therefore decides not to admit auxiliary requests 1-3 into the appeal proceedings."
  • As a comment, " nemo auditur propriam turpitudinem allegans"  can be translated as "no one can be heard to invoke his own turpitude (=depraved behavior)". That seems different from what the Board states in English.  



EPO T 2154/13 -  link


3. Auxiliary requests - Admittance into the proceedings
3.1 Both respondents argued that none of these auxiliary requests should be admitted, because they could and should have been filed before the opposition division.
No argument on the admissibility of these requests has been submitted by the appellants.
3.2 The Board notes that the patent was revoked for lack of novelty in view of the disclosure of D6, and that this objection was raised and discussed only at the oral proceedings before the opposition division in the absence of the appellants.
The procedural conduct of the appellants raises the issue whether this party, exercising due care in its procedural actions, should have submitted these requests during the opposition proceedings. This question is strictly related to the application of Article 12(4) RPBA, which states that the Board has the discretionary power not to admit requests which could have been presented in the proceedings leading to the decision under appeal.

The Board considers that non-attendance at oral proceedings before the opposition division does not in itself justify the submission of new requests in appeal proceedings as a (presumed) reaction to the course of the oral proceedings in which the submitting party deliberately did not participate.
In addition, as also noted in the appealed decision (see point 4.3 of the reasons), the appellants were - or should have been - well aware of the fact that respondent 2 had raised an objection of lack of inventive step based on D6 as the closest prior art. Hence, auxiliary requests aimed at overcoming these objections could and should have been submitted during the opposition proceedings.
Following the principle according to which the appellant should be prevented from seeking unjustified procedural advantages in disregard of procedural economy and to the disadvantage of other parties (nemo auditur propriam turpitudinem allegans), the Board therefore decides not to admit auxiliary requests 1-3 into the appeal proceedings.

14 May 2018

T 2026/15 - Not admitting or refusing a request?

Key points

  • In this examination appeal, the applicant argues that the Board should admit a request, because even though the Examining Division had stated that the request was not admitted under Rule 137(3) EPC,  the ED had in fact considered the request in substance and had rejected it. Therefore, Article 12(4) RPBA does not apply. 
  • The Board agrees. " In its decision, the examining division gave extensive reasons why claim 1 of the auxiliary request was unclear []. Only two of these were qualified as merely "prima facie". At least the other, fully reasoned, objections establish in substance why, according to the examining division, a European patent could not be granted on the basis of the auxiliary request. Therefore, the board agrees with the appellant that the examining division has "considered" and "taken into account" the auxiliary request." 
  • "The board hence also finds that the examining division implicitly admitted the auxiliary request and, equivalently, gave its consent under Rule 137(3) EPC. In other words, the examining division wrongly exercised its discretion because, having implicitly admitted the request, it no longer had a discretion not to admit it" 
  • See also T 2301/12


EPO T 2026/15 - link



1.1 The appellant challenged the non-admission decision, arguing as follows (see the grounds of appeal, page 5, paragraph 1). In "the decision the auxiliary request is discussed in detail, in particular with regard to Article 84 EPC. Hence, it is believed that the auxil­iary request is regarded as introduced during examining and has to be regarded during appeal proceedings." Furthermore, it was requested to "regard the auxiliary request as already admitted to the appeal proceedings".
1.2 In this request the appellant made implicit reference to Articles 12(1) and (4) RPBA and effectively argued that the board had no discretion to "hold inadmissible" the auxiliary request, which was filed with the grounds of appeal, even though it was, on the face of it, not admitted by the examining division. In other words, the appellant argued that the board was obliged to decide on the auxiliary request in substance and could not, instead, limit itself to a formal decision confirming the non-admission decision.
2. The board agrees with the appellant's arguments.
2.1 Article 12(1)(a) and (4) RPBA states inter alia that "everything presented by the" appellant with the grounds of appeal "shall be taken into account by the Board", except that it has "the power [...] to hold inadmissible" in particular requests which were "not admitted in the first instance proceedings". This language implies that that which is "h[e]ld inadmissible" is not "taken into account".

11 May 2018

T 0417/13 - Particle size difficulties

Key points

  • In this opposition appeal, the opponent alleges that claim 1 violates Article 83 because of the feature that the claimed paint comprises "solid [PCV] extender particles having an average particle size in a range from 20 to 60 microns", because of the particle size feature.
  • The Board considers it a notorious fact about particle size measurements that "variations of the order of several magnitudes in the values obtained as results of the various methods are possible." 
  • " The description of the application provides only very limited information that could lead to the selection of a particular method of measurement.  [...] The person skilled in the art has thus to rely on his common general knowledge for the selection of an appropriate method of measurement. [...]   
  • However in this case patentee a way out. "The [patentee] has submitted ISO standard 1624 relating to sieving as a method of measurement for determining the size of PVC particles. [] The common general knowledge [] thus points towards sieving as the method of choice for determining the particle size of PVC particles." 
  • The Board also sees a difference with T 225/93: " In the case underlying decision T 225/93 the prior art contained no indication of which method of measurement was suitable in particular for the calcium carbonate particles under consideration []. Unlike the situation in T 225/93, in the present case it has been determined that one particular method of measurement would have been chosen by the skilled person." 



EPO T 0417/13 -  link

3. Particle size measurements
In the board's judgment, the following physical and mathematical facts about particle size measurements are notorious, i.e. they were so well established in the art at the priority date that they cannot reasonably be disputed. First, there are different methods of measurement that are based on different physical properties of the particles to be characterised. Second, to a large extent the type of average used (e.g. type of mathematical average or type of base (number average versus weight average)) influences the results obtained. Variations of the order of several magnitudes in the values obtained as results of the various methods are possible. Since this knowledge is notorious, there is no need to discuss documents (2) (including (2a)), (3) and (4), all filed in order to establish the above facts.

10 May 2018

T 1050/12 - Abstract and library

Key points

  • This opposition appeal is about whether the abstract of a conference presentation was public before the priority date of 1 May 1998. The conference was on 30 May to 4 June. The abstracts were included in a supplementary issue (on paper) of a scientific journal. The cover of the issue refers to May 1998. However, three libraries had received and date-stamped the issue in April 1998. The opponent furthermore had filed declarations of the librarians confirming that in 1998, journals were available to the public shortly after the date stamping.  
  • The Board: " There is no evidence on file supporting the alleged possibility, raised by the [patentee], that the journal supplement, disclosing meeting abstracts for a future conference, was not to be disseminated freely; nor is there any evidence that journal supplements publishing meeting abstracts are not to be made publicly available as soon as they are distributed to libraries and subscribers. Hence, regardless of whether or not the librarian is considered a member of the public (as was the issue in decision T 834/09), the board considers that there is persuasive evidence that [the supplements] were made available to the public before the priority date of the present patent. Whether or not the supplement can be found on the website of the Journal of Urology does not alter the fact that copies of the journal [] were available to library users." 



EPO Headnote
Meeting abstracts published in a supplement to a regular volume of a scientific journal found to be publicly available before the priority date of the patent on the basis of library date-stamps and accompanying declarations of the librarians.

EPO T 1050/12 - link


Reasons for the Decision
1. The appeal is admissible.
2. Referral of a question to the Enlarged Board of Appeal
2.1 According to Article 112(1)(a) EPC, a 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 Enlarged Board of Appeal if it considers that a decision is required in order to ensure uniform application of the law or to clarify a point of law of fundamental importance.
2.2 The respondent based its request for a referral to the Enlarged Board of Appeal on the fact that decision T 834/09, cited by the appellant in support of arguments concerning the public availability of documents D3 and D7, had reached conclusions which were divergent from the earlier case law and represented a conceptual shift by promoting the librarian to a member of the public.