T 0755/14 - Unity of invention a posteriori: requires inventions

EPO T 755/14

For the decision, click here.

Key points

• The Board explains that for a lack of unity of invention of dependent claims a posteriori, it is required that the features of these claims define inventive subject matter. In case the dependent claims are considered to lack inventive step, they can not cause a lack of unity of invention.
• " Bei einer konsistenten Prüfung der Einheitlichkeit a posteriori zum Zeitpunkt der Erstellung des Teilrecherchenberichts oder aber spätestens zum Zeitpunkt der Erstellung des Recherchenberichts hätte die Recherchenabteilung mithin feststellen können und müssen, dass die zusätzlichen Merkmale der abhängigen Ansprüche 2, 4, 8, 9 und 10 jeweils keinen Beitrag zu dem zum Zeitpunkt der Versendung der Aufforderung nach Regel 64 (1) EPÜ verfügbaren Stand der Technik leisten und mithin keine "besondere technische Merkmale" im Sinne der Regel 44 (1) EPÜ darstellen können []. Demnach können die Ansprüche 2, 4, 8, 9 und 10 per definitionem gar keine Erfindungen im Sinne der Regel 44 (1) EPÜ darstellen. Der erhobene Einwand der mangelnden Einheitlichkeit a posteriori war mithin unbegründet."
• A similar reasoning is given in T 0129/14 at [5.4.]: " However, for each group of claimed inventions, the Examining Division should have identified special technical features and established a respective technical problem solved over document D1, i.e. the prior art considered in its assessment. This is not only clear from the established case law of the boards of appeal, but also directly derivable from the wording of Rule 44(1) EPC, which explicitly mentions, for each claimed invention, "a contribution [...] over the prior art".

Entscheidungsgründe

1. Angesichts der erstinstanzlichen Umstände des Falles hält es die Kammer für angebracht, kurz auf die Vorschrift der Einheitlichkeit sowie auf die etablierte Rechtsprechung zu dieser Vorschrift einzugehen.

1.1 Nach Artikel 82 EPÜ darf eine Anmeldung nur eine einzige Erfindung enthalten oder eine Gruppe von Erfindungen, die untereinander in der Weise verbunden sind, dass sie eine einzige allgemeine erfinderische Idee verwirklichen. Sind in einer Anmeldung mehrere Erfindungen beansprucht, ist das Erfordernis der Einheitlichkeit der Erfindung nach Artikel 82 EPÜ nur dann erfüllt, wenn zwischen diesen Erfindungen ein technischer Zusammenhang besteht, der in einem oder mehreren gleichen oder entsprechenden "besonderen technischen Merkmalen" zum Ausdruck kommt (Regel 44 (1) Satz 1 EPÜ). Unter dem Begriff "besondere technische Merkmale" sind diejenigen technischen Merkmale zu verstehen, die einen Beitrag jeder beanspruchten Erfindung als Ganzes zum Stand der Technik bestimmen (Regel 44 (1) Satz 2 EPÜ). Gemäß ständiger Rechtsprechung der Beschwerdekammern meint der Begriff "Beitrag" in diesem Zusammenhang einen neuen und offensichtlich erfinderischen Beitrag zum Stand der Technik (siehe die Rechtsprechung der Beschwerdekammern des Europäischen Patentamts, 7. Auflage 2013, kurz "RsprBK 2013", II.B.5.1 und 5.2).

T 0386/12 - Unity and unsearched features

T 0386/12

For the decision, click here

Key point

• The board considers that the mention in [Rule 137(5) EPC, second sen­tence] - to "unsearched subject-matter" must be con­strued as referring to the subject matter covered by the Euro­pe­an search report. Therefore, the "origi­nally claimed invention or group of inventions" mentioned in that Rule must also be that on which the European search re­port is based (i.e. the claims pending at the time of the search). In the present case, the supplementary European search report takes the place of the European search report pursuant to Ar­ticle 157(1) EPC 1973. Hence, the claims as pending when the supplementary European search was carried out, are deemed decisive for the "originally claimed invention or group of inventions" .

Summary of Facts and Submissions

I. The appeal lies against the decision of the examining division, with reasons dated 30 September 2011, to refuse European patent application No. 03783831.5 for lack of an inventive step

III. With its summons to oral proceedings, the board informed the appellant of its preliminary opinion, according to which the main request lacked clarity and an inventive step, Articles 84 and 56 EPC 1973, and the first auxil­ia­ry request was deficient under Articles 123(2) EPC and 84 EPC 1973, but the second and third auxiliary requests appeared to be allowable. The board however considered itself barred from ordering the grant of a patent, since the examining di­vision had stated that the claimed sub­ject matter had not been searched. The board there­fore indicated that it was minded to remit the case for fur­ther prosecution based on either the second or the third auxiliary request.

IV. In response to the summons, the appellant withdrew the main and first auxiliary requests and requested that the application be remitted to the department of first in­stance based on the second auxiliary request. In the ab­sence of any statement to the contrary, the board un­der­stands that the third to fifth auxiliary requests are maintained.

Reasons for the Decision

Admitting the second auxiliary request, Article 12(4) RPBA and Rule 137(4) EPC (2007)

2. In the present case, a supplementary European search re­port under Article 157(2) EPC 1973 was carried out, based on claims amended under Rule 109 EPC 1973. As the supplementary European search report was transmitted on 12 Feb­ru­ary 2008, i.e. after the entry into force of EPC 2000, but before the entry into force of the further amen­d­ed Rule 137 EPC on 1 April 2010, the appli­cable regula­tion is Rule 137 EPC (2007) according to the per­ti­nent transitional provisions (see Article 1 of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revi­sing the EPC of 29 November 2000, Special edi­tion No. 4 OJ EPO 2007, 219; Article 2 of the Deci­sion of the Admi­nistrative Council of 7 December 2006 amen­ding the Im­ple­menting Regulations to the EPC 2000, Spe­cial edition No. 1 OJ EPO, 2007, 89; and Article 2(2) of the Decision of the Administrative Council of 25 March 2009 amending the Implementing Regulations to the Euro­pe­an Patent Con­ven­tion, OJ 2009, 299).

3. In the minutes of a telephone conversation [of the Examining Division], dated 18 Au­gust 2011, which was held on 11 August 2011 in prepa­ra­tion of the oral proceedings­­, it is noted that claim 14 "appear[ed] prima facie to relate to un­searched subject matter which is not unitary with the original claimed invention and therefore not allowable, Rule 137(5)". This statement is indicated as having been made "merely academi­cally", is not fur­ther rea­soned and does not specify which features or feature combinations in particular were considered to constitute unsearched subject matter. Moreover, the decision itself does not contain a corresponding objection, let alone any rea­so­ning in this regard.

4. The board has no reason to doubt that claim 14 lacks unity with the originally claimed invention.

4.1 The board considers that the mention in Rule 137(4) EPC (2007) - corresponding to Rule 137(5) EPC, second sen­tence - to "unsearched subject-matter" must be con­strued as referring to the subject matter covered by the Euro­pe­an search report. Therefore, the "origi­nally claimed invention or group of inventions" mentioned in that Rule must also be that on which the European search re­port is based. In the present case, the supplementary European search report takes the place of the European search report pursuant to Ar­ticle 157(1) EPC 1973.

4.2 Amongst the claims covered by the supplementary European search report, claims 7 and 8 already contained the transmission of the iden­ti­fier of the delegating pro­cessing resource, the IPU, and claim 15 spe­cified that the delegating processor might go to "sleep" waiting for the result.

4.3 The board is hence satisfied that the independent claims of the present second auxiliary request are unitary with the originally claimed invention and thus concludes­ that Rule 137(4) EPC (2007) does not preclude admittance of the second auxiliary request.

5. Independent claim 1 of the present highest-ranking se­cond auxiliary request limits independent claim 1 as re­fused by fea­tures specifying what the identifier of the delegating processor is meant to be used for and how it is used to direct the result to the right processor. The board therefore considers that the amendments made in the second auxiliary request address the main issue of controversy vis-à-vis the decision under appeal, name­­ly the inventive merit of transmitting ("routing") the iden­ti­fier of the delegating processor with the de­le­ga­tion request. Therefore, the board has no doubt that the claims of the second auxiliary request should be ad­mitted, pursuant to Article 12(4) RPBA.

6. In view of the present decision, the board need not address whether any of the further requests are to be admitted. In par­ti­cular, the board need not address the doubts about the admissibility of the fourth and fifth auxiliary requests, which it expressed in the annex to its summons to oral proceedings (point 7.2).

T 2068/11 - Deposit of microorganism

T 2068/11 - [C]

For the decision, click here

Key point

• The applicant had deposited a microorganism under national Japanese law before the international filing date and had converted this deposit into an international deposit under the Budapest Treaty only after the filing date. Is Article 83 and Rule 28 EPC 1973 complied with? The present Board concludes it isn't.
• The EPO had set a time limit for conversion at the filing date in a Notice of 1986. The Board accepts that this time limit does not follow from the Budapest Treaty or the EPC, accordingly the Board is not bound by it. 
• " If conversion then equals sufficient disclosure, it is standard case law that this requirement must be fulfilled at the filing date. Every other interpretation would overturn a time limit that has been established for several decades and would disturb a long established legal certainty. Compelling reasons would need to be presented by the appellant to convince the board to take such a step. The board has not been presented with such reasons." 

Summary of Facts and Submissions

I. European patent application No. 05720034.7, filed on 4 March 2005, is based on international patent application PCT/JP2005/003762. It claims priority rights from Japanese patent application No. 2004059912, which was filed on 4 March 2004 and published on 15 September 2005. Entry into the European regional phase took place on 2 October 2006. The European patent application was published on 29 November 2006.

II. The applicant (appellant) filed an appeal against the decision of the examining division to refuse the European patent application. The examining division decided that the main request and the first auxiliary request before it did not meet the requirements of Article 83 EPC in conjunction with Rule 31 EPC (former Rule 28 EPC 1973), and that the second and third auxiliary request did not meet the requirements of Article 83 EPC.

III. The appellant was summoned to oral proceedings. A communication pursuant to Article 15(1) of the Rules of Procedure of the Boards of Appeal (RPBA) annexed to the summons, informed it of the preliminary non-binding opinion of the board on some of the issues of the appeal proceedings.

IV. The appellant submitted further arguments and evidence.

V. Oral proceedings were held on 17 March 2015.

VI. The claim requests on file are those of the appealed decision.

Claim 1 of the main request reads:

"1. Lactobacillus delbrueckii ANTI MUFFA FERM BP-10663."

Claim 1 of the 1st auxiliary request reads:

"1. Lactobacillus delbrueckii ANTI MUFFA FERM P-19705."

VII. Claim 1 of the 2nd auxiliary request reads:

"1. Lactobacillus delbrueckii ANTI MUFFA FERM P-19705 wherein ..." the microorganism is further defined by a list of morphological and physiological features.

Claim 1 of the 3rd auxiliary request differs from claim 1 of the 2nd auxiliary request as follows (differences underlined):

"1. Lactobacillus delbrueckii ANTI MUFFA FERM P-19705 having 99.5% homology to Lactobacillus delbrueckii subspecies Lactis as a result of a lineage analysis by 16s rDNA base sequence analysis, wherein ...".

VIII. The European patent application as originally filed and published refers to a microorganism with the accession number FERM P-19705. This was the national accession number given to the microorganism when it was deposited with the Japanese International Patent Organism Depositary (IPOD), on 27 February 2004. The deposit was made under the terms of the Japanese law governing such deposits.

T 2536/12 - Not addressing the bearing reasons

T 2536/12

For the decision, click here.

Key point

• The patent proprietor had withdrawn his requests during oral proceedings after discussion of novelty and inventive step and tried to replace these with new requests. These were not admitted into the proceedings, the patent was revoked pursuant to Article 114(2) EPC.
• In the Statement of Grounds, the initial requests were resubmitted and novelty and inventive step was argued for these requests. The present appeal is therefore inadmissible for lack of substantiation, because it did not address the actual bearing reason for revoking the patent, namely the decision of the OD to not admit the requests into the proceedings.

Summary of Facts and Submissions

I. European patent No. 1 583 626 (in the following: "the patent") as a whole was opposed on the grounds of Article 100(b) EPC and Article 100(a) EPC, for lack of novelty and inventive step.

II. During the oral proceedings before the Opposition Division, the patent proprietor withdrew its (sole) previous request on file, and replaced it by a main request and an auxiliary request (Annex A of the minutes) and, after an extensive discussion of the novelty and inventive step of these requests, the patent proprietor again withdrew these and replaced them by a new main request and a new auxiliary request (Annex B of the minutes) (see the minutes, page 2, point 4). The opponent objected to the admission of these new requests. After deliberation, the Opposition Division announced that the new requests were not admitted into the proceedings, pursuant to Article 114(2) and Rule 116(1) EPC. After the closure of the debate, when asked to confirm its requests, the patent proprietor confirmed that it maintained its non-admissible new requests (see the minutes, page 2, point 6). The Opposition Division then revoked the patent.

III. This decision has been appealed by the patent proprietor (here the appellant).

IV. With the summons to oral proceedings, the Board sent a communication pursuant to Article 15(1) of the Rules of Procedure of the Boards of Appeal (RPBA) indicating to the parties its preliminary opinion that the appeal is apparent to be inadmissible for lack of substantiation.

J 0001/15 - Renewal fee and very late notice loss of rights

J 0001/15

For the decision, clik here

Key point

• The EPO issued a notice of loss of rights more than a year after the time limit for payment of the renewal fee with surcharge, already pointing out that re-establishement of rights was hence not possible. 
• Appeal won't work either if you don't aks for a decision pursuant to Rule 112(2) first.
• The applicants appear to have been represented throughout by a (grandfathered Bulgarian) person who is as of yet on the list of professional representatives, but who had apparently not informed the EPO of the relocation of his office. 

Summary of Facts and Submissions

I. European patent application 09762149.4 "Encrypted Marking and method for securing and certifying the authenticity of a product" originates from PCT application IB2009 052476 filed on 10 June 2009.

II. The renewal fee for the fourth year fell due on 30 June 2012.

III. A formalities officer, acting on behalf of the examining division, issued two separate communications on 3 July 2014:

a) One communication pursuant to Rule 112(1) EPC informed the applicant of its loss of rights. The European patent application 09762149 was deemed to be withdrawn under Article 86(1) EPC because the renewal fee for the fourth year and the additional fee had not been paid in due time.

Besides the mentions of the usual means of redress that this communication under Form 2524 contained the examining division wrote: "Please be informed that the one-year time limit for re-establishment under Rule 136(1) from expiry of the unobserved time limit on 31.12.2012 has expired. This time limit is absolute, even if the noting of loss of rights pursuant to Rule 112(1) EPC had not yet been notified (see J 16/86, J 18/86, J 34/92)".

T 1104/11 - Late filed request and role of the Board

T 1104/11 - dated 29 April 2015 - [C]

For the decision, click here

Key point

• " Where the [patent proprietor as appellant] requests the Board to acknowledge [] inventive step, such requests do need a further substantiation also on that issue. For maintenance in amended form as is presently the case, the Board has to be convinced by the appellant-patent proprietor; it does not fall upon the Board to explain why unsubstantiated requests do not fulfil the requirements of the EPC."

2. Auxiliary request
2.1 The appellant filed the auxiliary request with fax on 23 April 2015, i.e. only three working days before the oral proceedings before the Board. Due to this late filing the admission of the request in the proceedings is subject to the discretionary power of the Board in accordance with Articles 13(1), (3) RPBA.

2.2 As put forward during the oral proceedings, the independent claims of the auxiliary request, i.e. including claim 1, have been completely reformulated. Features present in claim 1 of the main request are distributed in different locations in claim 1 of the auxiliary request and are combined with a rather long list of features taken from the description. There are no concrete explanations as to their basis ("all the features set out in section 5.1.2 of the provisional opinion of the Board have been introduced into independent claims" is the only substantiation) and as to these combinations with existing features of this claim. This already makes a prima facie assessment whether the requirements of Article 123(2) EPC are fulfilled impossible. In fact, it is apparently expected that the Board performs the acts the requester should have performed.

This manner of proceeding is regarded by the Board as being contrary to the following conditions frequently applied in connection with Article 13(1) RPBA for its admission: the efficiency of the proceedings should not be impaired and the request being prima facie allowable under Article 123(2) EPC.



1. Main request

1.1 Since the Board considers that the subject-matter of independent claim 1 of the main request lacks inventive step (see below), there is no need to discuss in this decision whether the other requirements of the EPC are fulfilled.

This kind of unusual approach messes up the discussion of the Auxiliary Request, which was filed to address clarity and Art. 123(2) issues, not inventive step...

2.3 It may well be that, as argued by the appellant, the claims had to be re-worded for clarity reasons, but this does not change the issues mentioned above.

2.4 Apart from the issues with Article 123(2) EPC, there is also the further issue with inventive step. In fact, in this respect the respondent was left with only three working days for it to assess whether a long list of new added features taken from the description indeed created more differences of claim 1 over D1, their effects, the problem(s) solved, etc. in terms of inventive step. This cannot be expected of the respondent without adjournment of the oral proceedings (Article 13(3) RPBA), since also on that issue of inventive step there is no clear guidance or argumentation in the accompanying letter applying the "problem-solution" approach starting from D1, according to the Boards of Appeal case law.

In view of the main request, it appears to me that inventive step was not intended to be based on these additional features but on the features already in te main request.

2.5 The appellant argued that the independent claims of the auxiliary request are based on those of the main request (auxiliary request III of the statement of grounds of appeal) with the further addition of all the features listed by the respondent in its reply, page 6, which were regarded by the respondent as leading to an inadmissible intermediate generalisation due to their omission in the claims. For the appellant, the amendments to the independent claims were therefore to simply address this respondent's objection with respect to Article 123(2) EPC.

For these reasons, the respondent could not be surprised by the amendments conducted in the auxiliary request and, hence, the auxiliary request should be admitted in the proceedings, for this reason alone.

2.6 The Board cannot share the appellant's view for the above mentioned reasons (point 2.4) given by the respondent during the oral proceedings.

Where the appellant requests the Board to acknowledge also inventive step, such requests do need a further substantiation also on that issue. For maintenance in amended form as is presently the case, the Board has to be convinced by the appellant-patent proprietor; it does not fall upon the Board to explain why unsubstantiated requests do not fulfil the requirements of the EPC.

In fact, the Board shares the respondent's view that the issue is not a matter of whether the respondent has been surprised by the amendments but rather a matter of a fair conduct from the appellant's side.

Finally, the difficulties to communicate and coordinate with its client, as argued in writing by the appellant (letter dated 23 April 2015), are entirely internal reasons, which cannot be taken into consideration by the Board.

2.7 In view of the above, the auxiliary request is not admitted in the proceedings (Articles 13(1), (3) RPBA).

T 1267/10 - Analogous application reformatio in peius

EPO T 1267/10

dated 20 April 2015, [C], for the decision click here

Key point

• In case both the Proprietor and Opponent appeal, a claim request filed not with the Statement of Grounds but with the response to the appeal of the opponent, should generally not involve broadening of the claims, by analogous application of the principle of prohibition of reformatio in peius (G 9/92).

3. Main Request

3.1 Admissibility

Claim 1 as upheld combined the features of granted claim 1 with those of granted claims 6, 8 that clarify the nature of the control and those of claim 9 specifying advance sending of the control message. Vis-a-vis that version claim 1 of the present main request omits the features of granted claim 9, though retaining those of granted claims 1, 6 and 8. The present main request thus pursues a position that is intermediate that of granted claim 1, which the appellant proprietor had defended in first instance, and that of claim 1 upheld, both positions it is undoubtedly entitled to pursue upon appeal. Furthermore, the exclusive focus on the features of granted claims 6 and 8 which define the nature of the control and in particular the relationship between the two controllers can be seen to address the decision's reasoning in this regard against novelty of granted claim 1, cf. page 5, 3rd paragraph. Thus, if the main request could in theory have been filed in first instance, its filing now with the grounds of appeal does not represent a significant departure from the issues considered in the decision under appeal, but is rather seen to be related thereto. It is also not evident that its filing arises from abuse or negligence on the part of the Appellant-Proprietor, or that its admission would otherwise be detrimental to general procedural principles or the rights of the Appellant-Opponent. For these reasons the Board decides to admit the main request into the proceedings, Article 12(4) RPBA.[...]
3.2.8 In the light of the above the Board concludes that the subject-matter of claim 1 of the main request lacks an inventive step, contrary to Articles 52(1) and 56 EPC.
[...]


5. Auxiliary Request 2

5.1 The Appellant-Proprietor has filed auxiliary request 2 with their submission of 14 March 2011 in response to the statement of grounds of appeal by the Appellant-Opponent. In claim 1 of this request the features of granted dependent claims 6, 8 and additionally 9 that were included in claim 1 of the main and auxiliary request 1 respectively (and directed at the nature of the control) are replaced by the features of granted claim 2 concerning communication of a vacuum system parameter from the vacuum system controller to milking system controller. Auxiliary Request 2 thus pursues a different concept from that developed in the main and 1st auxiliary request.

5.2 The Board holds that even though the Appellant-Proprietor was procedurally entitled to react to the appeal of the other party under Article 12(1)(b) and (2) RPBA, and possibly to submit further auxiliary requests, in the present case the submitted response is neither appropriate nor legitimate. Insofar as this request was meant as a response under Article 12(1)b RPBA to the Appellant-Opponent's appeal and the Proprietor is thus considered to act in the procedural position as respondent, the Board holds that the 2nd auxiliary request is inadmissible in its substance, by analogous application of the principle of prohibition of reformatio in peius (G 9/92, Headnote II, OJ EPO 1994, 875). It is apparent that the omission (by replacement) of features of claim 1 as upheld by the decision under appeal puts the Appellant-Opponent in a worse situation. On the other hand, if this request were considered to be filed by the Proprietor in the procedural position of appellant, than it should have been filed with the grounds of appeal pursuant to Article 12(2) RPBA at the latest, or even more preferably already before the first instance, Article 12(4) RPBA. While there is no general principle similar to the prohibition of the reformatio in peius that an appellant cannot improve its substantive position relative to its requests filed with the grounds of appeal, the Board deems it inequitable that the Appellant-Proprietor should be able to do so merely due to the fact that Opponent also appealed and therefore Article 12(1)(b) RPBA formally opened the possibility to make further submissions. It is clear that by filing this request at this stage in the proceedings effectively prevents the Opponent as respondent from submitting any substantive reaction to this request in good time, certainly making it impossible for the Opponent to comply with Article 12(1)(b) or 12(2) RPBA. Thus the submission of the 2nd auxiliary request would be admissible only exceptionally under Article 13 RPBA, which it is not, for the reasons below.

[Remaining paragraphs after the break]

J 0012/14 - Missing drawings

J 0012/14

For the decision, click here

EPO Headnote

1. The filing of drawings where the re-production of the figures is of low visual quality cannot be remedied by Rule 56 EPC.

2. It is within the responsibility of the applicant to determine the scope of the disclosure by selecting a readable version of the application documents including the figures reproduced in the drawings. However, the question of what technical features the figures in the drawings show with respect to the claimed invention is not part of the formal examination procedure before the Receiving Section.

Key point

• An invitation to file missing parts under Rule 56(1) can be requested. A refusal to issue such missing parts is appealable, despite Rule 56(1) last sentence stating that the applicant can not invoke the omission of the communication under Rule 56(1). 

Procedural 
II. The application concerns performance apparel with a basis layer and one or more layers (garments worn during a physical activity) with improved functionalities. On 11 January 2012, the EPO received the patent application via EPO-line electronically. It was accompanied by a set of 19 drawings with 39 figures. Figures 1 to 37B were supposed to show schematic torsos with various views of the garment. When the application was received at the EPO some of the figures were partly blurred and Figs. 4 and 5 were nearly black all-over.

III. The Receiving Section invited the appellant to remedy the deficiencies according to Rule 58 EPC and Rule 49(2) and (12) EPC.

IV. The appellant filed two sets of drawings to replace the drawings on file. The first set was said to be identical to the drawings of the US priority document. The second set showed corresponding formal drawings.

V. The new sets of drawings were not accepted by the Receiving Section for the reason that they revealed information which was not present in the original application documents.

VI. The appellant then replaced all drawings on file by a further set of drawings in which the figures were either left out entirely (Figs. 4, 5) or they showed no further information other than the outer lines of a torso. Together with these drawings the application was published.

VII. The appellant also requested the Receiving Section to issue a communication under Rule 56(1) EPC for the reason that the bad quality drawings filed with the application appeared to have missing parts, and those missing parts of the drawings were to be seen as "missing drawings" under Rule 56(1) EPC.

VIII. With the impugned decision the Receiving Section rejected the request. The Receiving Section was of the opinion that there were no "missing drawings" within the meaning of Rule 56(1) EPC and that Rule 56 EPC only allowed the filing of missing drawings, but not the replacement of filed drawings by an identical set of better quality drawings, without losing the earlier filing date.

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T 1808/13 - Brustle - stem cells and disclaimers

T 1808/13

Board 3.3.08- [C] - For the decision, click here

Key point

• A disclaimer excluding, in a process relating to use of embryonic stem cells, the use of stem cells obtained by a method involving destruction of human embryos, contravenes Article 123(2) because human embryonic stem cells could only be obtained at the priority date by methods involving such desctruction. 
• The present case law seems to mess up A 83 and A 123(2) for such disclaimers, based on an interpretation of G 2/10. G 2/10 must be applied in addition to G2/03. 

Sachverhalt und Anträge

VIII. Die unabhängigen Ansprüche 1 und 15 des Hauptantrags (Ansprüche wie erteilt) lauten wie folgt:

"1. Nicht-tumorigene Zell-Zusammensetzung, die sich aus embryonalen Stammzellen von Säugern ableitet, enthaltend

a) mindestens 85% isolierte neurale Vorläuferzellen mit der Fähigkeit in neuronale oder gliale Zellen auszureifen und

b) höchstens 15% primitive embryonale und nicht-neurale Zellen, erhältlich durch die folgenden Schritte:

(a) proliferieren von ES-Zellen

(b) kultivieren der ES-Zellen aus Schritt (a) zu neuralen Vorläuferzellen,

(c) proliferieren der neuralen Vorläuferzellen in einem Wachstumsfaktor-haltigen serumfreien Medium,

(d) proliferieren der neuralen Vorläuferzellen aus Schritt (c) in einem weiteren Wachstumsfaktor-haltigen serumfreien Medium und isolieren der gereinigten neuralen Vorläuferzellen und

(e) proliferieren der neuralen Vorläuferzellen aus Schritt (d) in einem weiteren Wachstumsfaktor-haltigen Serumfreien Medium und isolieren der gereinigten Vorläuferzellen mit der Fähigkeit in neuronale oder gliale Zellen auszureifen, wobei das Wachstumsfaktor-haltige serumfreie Medium in Schritt (d) bFGF und EGF umfasst und wobei das Wachstumsfaktor-haltige serumfreie Medium in Schritt(e) bFGF und PDGF umfaßt, mit der Maßgabe, dass das Verfahren nicht die Zerstörung menschlicher Embryonen einschließt. (Hervorhebung hinzugefügt)

15. Verfahren zur Herstellung von gereinigten neuralen Vorläuferzellen mit der Fähigkeit, in neuronale oder gliale Zellen auszureifen, umfassend die folgenden Schritte:

(a) proliferieren von ES-Zellen,

(b) kultivieren der ES-Zellen aus Schritt (a) zu neuralen Vorläuferzellen,

(c) proliferieren der neuralen Vorläuferzellen in einem Wachstumsfaktor-haltigen serumfreien Medium,

(d) proliferieren der neuralen Vorläuferzellen aus Schritt (c) in einem weiteren Wachstumsfaktor-haltigen serumfreien Medium und isolieren der gereinigten neuralen Vorläuferzellen und

(e) proliferieren der neuralen Vorläuferzellen aus Schritt (d) in einem weiteren Wachstumsfaktor-haltigen serumfreien Medium und isolieren der gereinigten Vorläuferzellen mit der Fähigkeit in neuronale oder gliale Zellen auszureifen, wobei das Wachstumsfaktor-haltige serumfreie Medium in Schritt (d) bFGF und EGF umfaßt und wobei das Wachstumsfaktor-haltige serumfreie Medium in Schritt (e) bFGF und PDGF umfaßt, mit der Maßgabe, dass das Verfahren nicht die Zerstörung menschlicher Embryonen einschließt." (Hervorhebung hinzugefügt)

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T 2255/10 - Closest prior art

T 2255/10

Board 3.4.03 - [C] - For the decision, click here

Key point

• The closest prior should have the same purpose "as the claimed invention" , but how to define the purpose of the invention? The present Board decides to focus on "what would be achieved by the invention as claimed", emphasizing " as claimed". 
• The present case concerns an examination appeal. Nevertheless the headnote seems useful for opposition cases as well. 

EPO Headnote

In accordance with the established case law of the Boards of Appeal the closest prior art for assessing inventive step is normally a prior art document disclosing subject-matter conceived for the same purpose as the claimed invention and having the most relevant technical features in common. (Reasons, point 2.2.2, citing T 482/92, Reasons, point 4.1, third paragraph.)

In establishing the closest prior art, the determination of the purpose of the invention is not to be made on the basis of a subjective selection from among statements of purpose which may be set out in the description of the application, without any reference to the invention as defined in the claims. On the contrary, the question to be asked is, what, in the light of the application as a whole, would be achieved by the invention as claimed.

For this reason, statements of purpose must be read in conjunction with the claims. Merely inserting such a statement into the description does not entitle an applicant effectively to "veto" any inventive step objection based on a document which is unrelated to this purpose, if it is not plausible that the invention as claimed would actually achieve the stated purpose. (Reasons, point 2.2.4.)

T 1775/12 - Oral proceedings after R71(3)

T 1775/12

For the decision, click here

EPO Headnote

The procedural issue of admission under Rule 137(3) EPC of amendments filed in response to a communication under Rule 71(3) EPC constitutes a "subject of the proceedings" within the meaning of Article 116(1) EPC, second sentence, EPC which is distinct from the discussion of matters of substantive law that has previously taken place at oral proceedings.

Key point

• After first oral proceedings, an intention to grant based on the auxiliary request is issued. In response, the applicant files amended claims and requests oral proceedings. The amended claims are not admitted and the application is refused without (second) oral proceedings. This was a substantial procedural violation because the request for oral proceedings could not be rejected under Article 116(1) EPC, according to the Board.
• Article 116(1), second sentence: "However, the European Patent Office may reject a request for further oral proceedings before the same department where the parties and the subject of the proceedings are the same." 

Reasons for the Decision

Applicable law
1. The present application was filed on 4 January 2008 as a divisional application to application No. 04811128.0. It was refused with decision posted on 23 March 2012.

Therefore, Rule 71 EPC in the version in force as of 13 December 2007 (Article 4(2) of the decision of the Administrative Council of 26 October 2010 amending the Implementing Regulations to the European Patent Convention and the Rules relating to Fees [CA/D 2/10], OJ EPO 2010, 637) and Rule 137(3) EPC in the version in force as of 13 December 2007 (Article 2(2) of the decision of the Administrative Council of 25 March 2009 amending the Implementing Regulations to the European Patent Convention [CA/D 3/09], OJ EPO 2009, 299) apply.

Second oral proceedings

2. In the present case, oral proceedings were held before the examining division on 7 April 2011. At the oral proceedings, the main request filed on 4 March 2011 was found not to be allowable. However, the examining division informed the applicant of its intention to grant a patent on the basis of the auxiliary request filed at the oral proceedings. The communication to that effect under Rule 71(3) EPC was posted on 23 May 2011.

T 2001/12 - Essential features: Art. 83 or 84 or 56?

T 2001/12 

published 03.02.2015 - [B] - for the decision, clicke here

EPO Headnote
An objection of insufficient disclosure under Article 83 EPC 1973 cannot legitimately be based on an argument that the application would not enable a skilled person to achieve a non-claimed technical effect (point 3.4).

A doubt that the invention as claimed is capable of solving the problem defined in the application may have the following consequences:

a) If the question arises because the claim fails to specify those features which are disclosed in the application as providing the solution to the problem, then the description and claims are inconsistent in relation to the definition of the invention, and an objection under Article 84 EPC 1973 may properly arise that the claims do not contain all the essential features necessary to specify the invention.

b) If this is not the case, but, having regard to the prior art, and irrespective of what may be asserted in the description, it does not appear credible that the invention as claimed would actually be capable of solving the problem, then an objection under Article 56 EPC 1973 may be raised (point 4.4)

Key points

• This decision seems very useful for daily practice, for those cases the Examiner or a third party does not believe that the invention as claimed "works" - hence does not provide the "promised effect" (or considers the claims to be "too broad" ). If that effect is specified in the claim, it is a matter o A83. If the description describes features as essential which are not included in the claim, it is a matter of A84. Otherwise, it is a matter under A56.
• In case it is a matter of A56, and if the applicant can not demonstrate the effect credibly, the objective technical problem has to be forumlated differently. This does not need to be fatal, because the claimed subject matter can still involve an inventive step as non-obvious alternative, or solution to the less-ambitious problem.

T 2579/11 - Priority document as CPA

Keypoint  T 2579/11

• In case the prior art contains an application and in the file thereof, the priority document, and some examples included only in the priority document are closer to the claim at issue. These examples in the priority document can form the closest prior art, even if the subsequent application has a generally more detailed description.

EPO Headnote (informal translation)
The fact that a subsequent application has a generally more detailed description than its priority document can not in itself justify disregarding the priority document in favour of the subsequent application when choosing the closest prior art

T 2579/11

Online 28.04.2015 - dated 10.03.2015 - Board 3.3.05 (Raths, Haderlein, Blasi) - FR - C - click here for the decision

EPO Headnote

Le fait qu'une demande ultérieure a une description généralement plus détaillée que la demande de priorité ne peut, en soi, justifier d'écarter le document de priorité en faveur de la demande ultérieure lors du choix de l'état de la technique le plus proche.

This post has been kept in stock for some time.

Relevant paragraphs of the decision
[after the break]

National decision - Can anyone start revocation action?

Paris Court of Appeal of 19 March 2014 (10/21042) – Artygraphie v Cartel

Source: EPO OJ 2015 SE2

EPO Summary of the case

Keyword: patentable invention – technical character

The defendant was the proprietor of European patent 1 336 948 for a "public display interactive terminal". A subsequent request for limitation of the French part of the patent was granted by INPI.

The appellant sought the French part's revocation in its entirety for lack of technical character, novelty and inventive step.

The appellant wanted all claims revoked, even though the defendant was only suing it for infringing claims 1 to 5, 7 and 9. Its request in respect of dependent claims 6, 8 and 10 was therefore inadmissible for lack of legal interest.


Note

Article 138(1) EPC does not stipulate who may initiate revocation proceedings. In France, these can apparently only be started by an accused infringer and only as far as the claims are alleged to be infringed. This makes filing opposition before the EPO even more important to consider.

See this post by Isabelle Romet about the restrictions on starting revocation proceedings in France.
As explained in that post, a time limit of 5 years may also apply in France for starting revocation proceedings, possibly even starting from the publication of the application. However, this seems to be the subject of much debate.
An interesting question is, of course, whom the UPCA will allow initiating (central) revocation proceedings.

This post has been kept in stock for some time.

Article 65 UPCA - Who can start revocation action?

Article 65

Decision on the validity of a patent

1. The Court shall decide on the validity of a patent on the basis of an action for revocation or a counterclaim for revocation.

2. The Court may revoke a patent, either entirely or partly, only on the grounds referred to in Articles 138(1) and 139(2) of the EPC.


Note - can anyone start a revocation action?

In France, a person without any interest can not request revocation of a patent. In many EPC countries, the ground for revocation of Article 138(1)(e) EPC - that the proprietor is not entitled - can only be invoked by the person asserting to be entitled. These limits are based on national law. How will the UPCA deal with these? For non-opted out European patents, this would allow for different outcomes on the validity in single case.
For unitary patents, this would result in differences between unitary patents, not at the edges (as in the case of the unitary patent as an object of property), but at the core of patent law. Hence, an autonomous interpretation seems also possible: that Article 65 UPCA stipulates that Article 138(1) can be invoked by anyone without limitation.

Addendum 08.04.2023: Art. 47(6) provides that any natural or legal person, ..., who is concerned by a patent, may bring actions in accordance with the Rules of Procedure.

EPO Case Law week 24

Noteworthy EPO decisions published  08.06 - 12.06.2015

Only one interesting decision this week (actual publication dates)

T 0035/12 - Returning to previous requests

T 0035/12 -
Patentee wanted to return to the set of claims filed with the statement of grounds, during oral proceedings as 4th auxiliary request. Not admissible.
" As said claims had been withdrawn prior to the oral proceedings the attempt to reintroduce them constituted a - further - change to the case presented on appeal, which change happened at a late stage of the proceedings before the Board - namely at an advanced stage of the oral proceedings. Admissibility thereof to the proceedings is thus subject to the stipulations indicated above, in particular that such claims be prima facie clearly allowable."

T 2541/11 - Documents filed with appeal are at discretion of the board

Key point

• The allegedly novelty destroying document E12 filed with the statement of grounds is not admitted as being late filed under Article 114(2) EPC.
• The Board notes that E12 was filed three years ago, but that its particular relevance was only argued in appeal, and does not seem to approve of such strategy. 

This post has been kept in stock for some time.

T 2541/11 - 16.04.2015

Dated 17.12.2014 - Board 3.2.04 - publication C - for the decision, click here

Summary of Facts and Submissions
[Text after break]

T 1981/11 - Feature description covered by search?

Key point

• If in a search report only background prior art is cited for a claim with a broad feature, it must be assumed that the specific embodiments in the description have been searched. 

T 1981/11 
Dated 04.05.2015, published 01.06.2015. For the decision, click here.

Possible remittal, Article 111(1) EPC 1973, in view of the scope of the search

13. For the present application an international search was carried out which produced no documents other than D1 and D2, D1 being prior art under Article 54(3) EPC and 54(4) EPC 1973 and D2 being classified as an "A" docu­ment lacking particu­lar relevance for novelty or inven­tive step for all the ori­ginal claims.

13.1 While this search must be assumed to have been complete for the claims as origi­nally filed, it is necessary to determi­ne whether this assumption still applies to the present amen­­­ded claims. Should doubts remain in this res­pect, the board would have to remit the case to the first instance in order for it to con­sider whether an additional search would have to be carried out.

13.2 Pursuant to Article 15(3) PCT, the international search must be assumed to have been made ­on the basis of the claims, with due regard to the description and drawings (if any). According to Article 157(1) EPC 1973, the in­ternational search re­port takes the place of the Euro­pean search report. It is noted that Article 92 EPC 1973 defines the scope of the European search in essen­tially the same words as Article 15(3) PCT.

13.3 Original claim 7 specified that the user-attributed rights and the received DRM rights constitute two sets of rights that are "linked" together. No further de­tails of "linking" were originally claimed. However, alter­na­tive ways to achieve such "linking" were dis­closed in the application as originally filed (see p. 15, line 13 - p. 16, line 29; p. 5, lines 21-25).

13.4 Hence, in accordance with Article 15(3) PCT, the search must be assumed to have covered the concept of linking two sets of rights, interpreted in view of the alterna­tive em­bo­diments on pages 15 and 16 of the description. It must therefore have been clear to the search examiner that any document relevant for novelty or inventive step of any of these alter­na­tive embodiments would ipso facto have been relevant for original claim 7.

13.5 From the fact that the search did not reveal any docu­ment of particular relevance for the broad original claim 7 it must therefore be concluded that the search was extended to the above-mentioned, narrower embodi­ments and that it did not reveal any documents of parti­cular relevance for any of these embodiments either.

13.6 Therefore, the board concludes that the search per­formed for the present application must be considered to have also covered the present independent claims 1 and 11.

13.7 A remittal for further prosecution is therefore not justified.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the examining division with the order to grant a European patent with the following documents:

T 0167/11 - Documents filed with Notice of Opposition but not relied on

Key point

• Prior art documents which are submitted with the Notice of Opposition, but which are not used to substantiate any argument, can not be declared "inadmissible". Rather the OD can not consider them.

This post has been kept in stock for some time.

T 0167/11 - 27.02.2015

Dated 22.01.2015 - Board 3.2.07 - publication C - for the decision, click here

Reasons for the Decision

3. Remarks on the procedure before the Opposition Division

The Opposition Division concluded in its communication of 8 February 2010 annexed to the summons to oral proceedings that all the further documents "are not admissible under Article 99(1) and Rule 76(2)(c) EPC since no case to answer was based upon those documents" (see point 2.1.3 above). The same occurred in its communication of 3 November 2010 confirming the date of the oral proceedings.

It appears that the Opposition Division adheres to the concept that an opposition may have a "partial admissibility" in the sense that documents filed with the opposition, but which are not "in support of these grounds" (i.e. the grounds mentioned in the opposition) as mentioned in Rule 76(2)c) EPC, are also not complying with Article 99(1) EPC and can therefore be found "inadmissible". This appears to be an analogous application of Rule 77(1) EPC, which applies, however, to the opposition as a whole.

The Board cannot agree with this approach. What an Opposition Division can do, however, is to indicate that it sees no need at that point in time to consider the evidence for which no substantiation has been submitted. This has the same result, but is not formulated as a procedural decision taken by the Opposition Division in the early stages of the proceedings.

"Admission into opposition proceedings" only appears to apply when Rule 116(2) EPC is to be considered, i.e. facts and evidence filed after the final date for making written submissions.

As a consequence, the evidence filed with the opposition is not "outside" of the proceedings, but is "in" the proceedings. Of these, the Board only deems D1 sufficiently relevant, so as to be discussed for inventive step.

Article 68 UPCA: Recovery of profits

Recovery of profits

Article 68. Award of damages

4. Where the infringer did not knowingly, or with reasonable grounds to know, engage in the infringing activity, the Court may order the recovery of profits or the payment of compensation.

Note

This provision corresponds to Article 13(2) of the Enforcement directive. Recital 13 of the Unitary Patent Regulation states that: " The regime applicable to damages should be governed by the laws of the participating Member States, in particular the provisions implementing Article 13 of [the Enforcement Directive]" . However, since the UPC will have jurisdiction on unitary patents, this should probably be taken as a reference to Article 68 UPCA without the need to consult the law of the various Member States.


Note however that draft Rule 125 does not seem to refer to the compensation of Article 68.4 UPCA. Hence, how it is different from damages is not immediately clear. Probably a "reasonable compensation" is intended.

EPO case law week 23

Noteworthy EPO decisions week 23 (published 01.06-05.06.2015)

T0306/10 - feature technical or not? - In the Board's view, the selection of an item, for example a song, for recommendation to a user does not qualify as a technical purpose. From a technical point of view it is irrelevant what songs are recommended to a user. While making "good" or "bad" recommendations may lead to different user reactions and thereby, in the end, to different technical results (the user might for example play more or fewer songs, or issue more or fewer search queries in order to find other songs), such results do not qualify as a technical effect of the recommendations, as they depend on subjective choices made by the user (cf. decision T 1741/08 of 2 August 2012, reasons 2.1.6).

T 0445/08 - [C] - Correction identity of appellant, follow up of G1/12 - EPO headnote: If the notice of appeal is to be considered in the context of the file history, the true intention needs to be confirmed by external facts and evidence at least to prevent that requirements such as those of Article 107 EPC be circumvented. In applying Rule 139 EPC to a party's request to correct a mistake in the notice of appeal in respect of the identity of the appellant, the principle of legal certainly needs to be taken into consideration . 

T 0756/09 - Australian patent attorney allowed to speak as accompanying person - precisely because he would not speak as technical expert.

T 0275/11 - The alleged technical effect of  a hair treatment was based on comparison by testers. Insufficient evidence, because " No indication was given on the conditions under which these tests were run. Further, in its statement of grounds of appeal the Appellant only gave a summary of the test results, which can assist the Board in its evaluation of the experimental evidence, but which cannot substitute for the detailed information on the individual test results presented either in terms of written statements of each testing person or in terms of tables containing the individual scores given by these testers. Therefore, the Respondent and the Board did not have the information to objectively assess and evaluate the experimental evidence referred to by the Appellant." 

T 1823/11 - Sufficiency of disclosure - how to do it right.

Keypoint

• The Board shows how to do the assessment of sufficient of disclosure of a second medical use claim.
• A claim for the use of phaseolamin as an anticaries agent can be novel and inventive over a document describing use of an plant extract, which inherently contains the protein, for inhibiting the adherence of plaque-producing bacteria to the teeth. In particular since another compound was believed to be the active ingredient.

T 1823/11

Dated 20 May 2015, publication date 29.05.2015 - for the decision, click here.

Reasons for the Decision

[...]

2. Article 83 EPC

2.1 In its decision to refuse the application for non-compliance with the requirements of Article 83 EPC, the examining division pointed out two deficiencies, namely the absence of indications as to the preparation of phaseolamin and the absence of any information as to the pH conditions.

2.2 With regard to the absence of information as to the preparation of phaseolamin, the appellant explained during the examination proceedings that this protein was well known and even commercially available at the date of filing (letter of 14 December 2010).

Indeed documents D2 (see page 4, lines 8 to 25) and D3 (see example 22) indicate that phaseolamin was known before the priority date of the application. This is also confirmed in the post-published document D7 in which the protein phaseolamin is described by reference to an article published in 1992 (page 1, lines 16 to 28).

Document D2 is also evidence for the appellant's statement that phaseolamin was commercially available. This document, published nearly two years before the priority date of the present application, indicates that phaseolamin is available in two grades of purity and provides the name of a commercial source of the product (page 4, lines 18-21). From document D2 the skilled person would also derive the information that phaseolamin is a glycoprotein which inhibits alpha-amylase and can be extracted from Phaseolus vulgaris (page 4, lines 8 to 17). Detailed information concerning the isolation from Phaseolus vulgaris of proteins inhibiting alpha-amylase are furthermore disclosed in document D6 (page 32, "Material and methods").

2.3 From the above the Board concludes that phaseolamin was a protein sufficiently known at the filing date of the application. Thus, even in the absence of any instruction with regard to its preparation, the skilled person would have easily retrieved information with regard to its commercial availability or with regard to the methods for extracting it from Phaseolus vulgaris.

2.4 The second deficiency considered by the examining division, in relation to the assessment of sufficiency of disclosure, concerns the absence of information as to the pH of phaseolamin.

National decisions - Inherent features and implicit disclosure

Federal Court of Justice of 14 August 2012 (X ZR 3/10) – Non-UV-sensitive printing plate
OJ 2015, Suppl. 2, IV

Key point

• In case a priority document discloses an embodiment with an inherent feature, this document anticipates, but does not disclose the subject-matter of a claim specifying that feature.

EPO summary of the decision

According to the Court's established case law, the skilled person has to be able to derive the claimed technical teaching – "directly and unambiguously" – from the original documents as a possible embodiment of the invention. Where an element of the teaching in a citation (here: D1) was characterised by a feature enabling the skilled person to select embodiments suitable for achieving the desired effect (here: lack of photosensitivity to ultraviolet light), but which was not clearly disclosed in the priority document (here: D1.1, D1.2), there is a lack of disclosure in the subsequent application if that property, even though, from an objective point of view, it was also a feature of an embodiment disclosed in the priority document, was at least not readily apparent to the skilled person. As an aside, the Court observed that this reasoning also applied to the ground of revocation of subject-matter extending beyond the content of the application (inadmissible extension: cf. Federal Court of Justice of 17 July 2012 – Polymer foam).

The Court also observed that, to avoid unreasonably restricting applicants in drawing on disclosure, it had allowed generalisations of originally disclosed embodiments. However, such generalisations are not considered admissible where the more general form is characterised by a feature not actually mentioned or not readily apparent to the skilled person. No other test can be applied in the assessment of priority. It is therefore not sufficient by itself that this feature becomes apparent when a disclosed embodiment is reproduced.

This post was kept in stock for some time.

EPO OJ 5/2015

EPO Official Journal May 2015

• New edition of Euro-PCT Guide (available online since 1 April)
• Text of the CJEU decisions in the matter of Spain's challenge of the unitary patent.

Also issued: 15th edition of the Guide for Applicants (part I) 

Article 68 UPCA: damages and willfulness

Unitary patent, willfulness and damages

Article 68. Award of damages

1. The Court shall, at the request of the injured party, order the infringer who
knowingly, or with reasonable grounds to know, engaged in a patent infringing activity,
to pay the injured party damages appropriate to the harm actually suffered by that party as a result of the infringement.

Questions -

1. What must be known - probably at least the existence of the patent but is it enough?
2. Is a fair believe that the activities do not fall within the claimed scope a defence?
3. Is a fair believe that the activities were not covered by Article 25 and 26 UPCA a defence?
4. Is a fair believe that the patent is invalid a defence? (compare Commil v. Cisco (U.S. Supreme Court 2015)
5. What if at the time of the infringing activity, the patent had been revoked in first instance and appeal was pending?
6. Of course, what are the " reasonable grounds to know" ?
7. Knowledge of which persons is sufficient for liability of a corporation?

EPO Case Law week 22

Noteworthy decisions EPO week 22 (published 25.05 - 29.05.2015)

R 16/13 [B]- successful petition for review

T0908/10 - sufficiency of second medical use claim - " The relevant question to be addressed in the context of Article 83 EPC is whether or not the patent in suit provides enough guidance for the skilled person to manufacture fusion proteins which also show the claimed therapeutic effect without undue burden or rather whether the skilled person is faced with a research program for which no guidance is forthcoming."


T 1972/10 - whole does not provide basis for part - opposition against divisional with filing date 16.12.1994 (filed 14.07.2003, intention to grant 01.12.2005, legal decision 7.12.2007 (J18/06) mention of the grant 26.03.2008), so the present decision well after expiry patent term. Patent revoked as it extend beyond the content of the grandparent. Claim 1 is directed to " the medical use of the neurotoxic component of Botulinum toxin, where the use is the treatment of a spastic muscle by intramuscular injection". Grandparent disclosed use of the whole toxin, not of the neurotoxic component.

T 2159/11 - A123(2) and ranges - " the board concludes that the [claimed] sub-range "from greater than 85 to 92" is not implicitly disclosed by the broader range "from about 50 to about 92" and the sub-range "from about 50 to about 85" in the application as originally filed.
It remains to be examined whether the implicitly disclosed interval "from 85 to 92" (!) could still provide a basis for the range "from greater than 85 to 95". This could be the case if the term "greater than 85" did not add any technical information going beyond that of the term "85".
According to the appellant (see point 6.6. above), the feature "greater than 85" was required in claim 1 in order to exclude the otherwise overlapping point "85". Thus, the feature "greater than 85", which excludes the overlapping point "85", must necessarily be different from "85", which includes it. It must therefore be concluded that the feature "greater than 85" represents additional technical information (T 985/06, Reasons 2.1), and cannot be considered implicitly disclosed by the value "85".
The lower amount of polymerised VDF of "greater than 85" required by claim 1 thus does not find a basis in the application as originally filed, with the consequence that the ground under Article 100(c) EPC precludes the maintenance of the patent as granted."

T 1538/10 - [C] - The respondent's request that the appellant's main request not be admitted under Article 12(4) RPBA, was not granted, because the board is not convinced that the present main request "could have been presented in the first-instance proceedings" within the meaning of Article 12(4) RPBA.

Decisions with publication date 29.05

T 2046/11 - could have been filed in first instance - Examination appeal. Auxiliary request not admitted under Article 13(1) RPBA. . "Further, the board cannot see any reason why the applicant would not have been in a position to present before the first instance a claim which included the above feature. The introduction of this feature in an independent claim for the first time in appeal proceedings means that the examining division was not given the possibility to give a final decision on the merits of this feature. The board would therefore be compelled to either give a first ruling on this issue, which would run contrary to the purpose of a second-instance proceedings, or remit the case to the first instance, which would clearly be contrary to procedural economy." Hence, even if you want a decision of the Board on the main request, you must present the auxiliary request before the ED.

T 0335/11 - mind willing to understand - In the context of novelty, the Board notes that "according to general principles of claim interpretation, see Case Law of the Boards of Appeal, 7th edition 2013, II. A.6.1 the skilled person reads a claim with a mind willing to understand, giving the various terms their normal meaning and reading them contextually."

T 0160/13 - formal requirements transfer priority - formal requirements for transfer of priority right based were to assessed under German law (no reasons given, German utility model as priority founding application. Exchange of email sufficient.

T 0715/14 - Rule 140 correction of decision - Examination appeal. Refusal decision was corrected under Rule 140 after expiry appeal period and filing of the Statement of grounds - allowed.