A. Exceptions to patentability
1. Patentability of biological inventions
1.1 Product claims for plants or plant material
(Case Law of the Boards of Appeal, 8th ed. 2016 ("CLB"), I.B.3.3.3)
In its decision T 83/05 of 10 September 2015 the board applied the decision of the Enlarged Board in G 2/13. Claim 1 of the main request was directed to an edible Brassica plant produced according to a method of crossing and selecting. Claims 2 and 3 were directed to an edible portion and to the seed of a broccoli plant produced by a method defined in the same manner as in claim 1. Claims 4 and 5 were directed to a broccoli plant and a broccoli inflorescence. The board remitted the case to the department of first instance with an order to maintain the patent on the basis of claims 1 to 5 of the main request, a description yet to be adapted and figures 1 to 5 as granted.
In T 1242/06 of 8 December 2015 the board applied G 2/12. The newly submitted claims were restricted to claims for products and related to a (naturally) dehydrated tomato fruit of the species L. exculentum. The board held that the subject-matter of the claims of auxiliary request I, which had been filed during the oral proceedings before the board on 8 November 2011, was not excluded from patentability pursuant to Art. 53(b) EPC.
The board set the decision of the opposition division aside and remitted the case to the opposition division with the order to maintain the patent on the basis of these claims and a description to be adapted thereto.
1.2 Essentially biological processes for the production of plants
In T 915/10 the invention concerned soybean plants which had been genetically modified so as to make them tolerant to the herbicide glyphosate. The subject-matter of claim 3 was a method for the production of a soybean plant tolerant to glyphosate herbicide. The resulting plant had an improved yield potential linked to the presence of SEQ ID NO: 9. The method was defined solely by the technical process step of introducing SEQ ID NO: 9 into the genome of the plant by transformation of plant cells with heterologous DNA, i.e. a genetic-engineering step introducing heterologous DNA in plant cells.
The board noted that the introduced trait was due directly to the expression of the inserted DNA and was not the result of a plant breeding method characterised by crossing and selection. Indeed, the method as claimed did not require nor define steps of mixing genes of plants by sexual crossing and subsequent selection of plants, either explicitly or implicitly. The board was thus satisfied that the method of claim 3 did not fall under the exclusion of "essentially biological processes for the production of plants" pursuant to Art. 53(b) EPC.
Rather, the board considered that the subject-matter of claim 3 was a method for the production of plants by means of genetic-engineering techniques (in this case transformation), which involves laboratory techniques essentially different from breeding methods and which as such have been accepted in the case law to be patentable. The board noted that there was nothing in decisions G 2/07 and G 1/08 which would indicate that the Enlarged Board of Appeal was of the opinion that this practice ought to be reconsidered as a result of its analysis of the process exclusion in Art. 53(b) EPC. Indeed, the Enlarged Board of Appeal rather endorsed that patent protection was available, for example, for genetic-engineering techniques applied to plants which techniques differ profoundly from conventional breeding
techniques (G 2/07, point 18.104.22.168 of the Reasons, penultimate paragraph).
2. The term "therapy" – definition of the term
In T 2420/13 the board held that using a spectacle lens to correct a glasses wearer's defective vision was not a method for treating the human body by therapy within the meaning of Art. 53(c) EPC. It was true it alleviated or lessened the symptoms of defective vision (see T 24/91), but that did not make it a therapeutic treatment. Such treatment required some intervention on the body or body part to be treated which caused a therapeutic effect. The use claimed here alleviated or lessened the symptoms of defective vision only by targeted alteration of the convergence or divergence in the pencil of rays travelling towards the glasses wearer's eye, without thereby "treating" his body, or his eyes in particular, in any way.
1. Availability to the public – ways of making information available to the public
1.1 Publications and other printed documents
In T 526/12 the examining division had considered D1 to be the closest prior art. D1 had been referred to in the decision and in the search report as an internet citation. However, no details and reasons had been given as to whether and why D1 actually belonged to the state of the art. The date on which the document had been retrieved was indicated as 2 August 2007, which was after the priority date of the present application. Furthermore, a search carried out by the appellant using the "Wayback Machine" had revealed a date after the priority date. The examining division had not provided evidence that D1 had actually been available on the internet prior to the priority date, although this was explicitly challenged by the applicant. The board concluded that it had therefore not been established that D1 was available to the public on the internet before the priority date. The board stated that for a written description to be regarded as having been made available to the public, it sufficed that it was possible for the public to gain knowledge of its content without any obligation of confidentiality restricting the use or dissemination of such knowledge. As to whether written information contained in a document had been made publicly available, it was generally necessary to establish all the facts: where did the documents turn up; under what circumstances were the documents made accessible to the public, and who constituted the public in the case in question; was there any explicit or implicit confidentiality agreement; and when (date or period of time) were said documents publicly available?
1.2 Public prior use
In T 1410/14 it was common ground between the parties that a vehicle ("City Runner") with the claimed features had been test driven on a route forming part of a town's public transport network on a particular date, but also that the coupling joint in question could have been seen only from above, namely from an overhead pedestrian bridge. For the board, it was not proven that this prior use would have enabled a skilled person to identify all the features of the invention. In particular, the appellant had failed adequately to show that a specific feature (a bracket forming part of the pivot bearing and held displaceably on the coach body) had been apparent to the skilled person during the test drives. Summing up, the board held that features of subject-matter that had been visible only briefly could be considered to have been made publicly available only if it could be shown beyond doubt that they had been clearly and directly apparent to the skilled person for that short time.
In T 2440/12 the invention related to a simulation of fluid flow and structural analysis within thin-walled three dimensional geometries. The invention was a method to be performed by a computer (following some input by the user). The crucial issue was the effect of the alleged public prior use on the patentability of the claimed invention. The prior use was in the form of sales of a software product that embodied the claimed invention. The essential facts of the prior use were not in dispute. Prior to the filing date of the opposed patent, the respondent (patent proprietor) had already commercialised its software product Cadmould. After having been sued by the appellant (opponent) for patent infringement, the respondent had intended to disclose the method embodied in this software in order to demonstrate that it was based on its own development and did not infringe the appellant's patent. Since the respondent did not wish the disclosed information to be unprotected, it had decided to file its own patent application – leading to the opposed patent – on the assumption that a valid patent could still be granted notwithstanding the prior commercialisation of its software. The board stated that any customer to whom the respondent's software product had been delivered before the filing date of the patent was able to perform the claimed method, simply by running the software on a (general purpose) computer. In such a situation, where a potentially unlimited number of members of the public performed or were able to perform a process by means of a commercially available software tool, the fundamental legal question arose whether, and if so, to what extent these persons had to be aware of the specific features of the performed process for the latter to have been made available to the public. In essence, the board came to the conclusion that prior use of a software product in the form of sales made the method implemented by the software part of the state of the art since, in principle, the skilled person could have executed the software line-by-line on a computer, and, in doing so, would have not only carried out the method, but also gained knowledge of the method steps performed by the computer. The board concurred with the appellant that even a different "disclosure" of the method, as could be obtained by executing it on a computer line-by-line without infringing copyright protection, was sufficient to take away the novelty of the method as claimed. Hence, the board came to the conclusion that the subject-matter of claim 1 was not new following the prior use of a software product which undisputedly embodied the claimed subject-matter.
2. Determining the content of the relevant prior art
2.1 Taking drawings into account
In T 2052/14 the examining division had found that the range for the length-to-curvature-radius ratio specified in claim 1's characterising portion had already been disclosed, citing drawings in a document D1 showing a ratio of 0.9. The board disagreed, holding that, whatever impression those drawings might have given the examining division, they could not be regarded as directly and unambiguously disclosing the feature in question, as the skilled person would know that they were merely schematic illustrations from which it was therefore impossible to derive specific dimensions or ratios in the absence of any indications to that effect. Indeed, since the drawings in D1 were not labelled as to scale, they were no more than schematic illustrations of this, commonly seen kind, i.e. ones illustrating a document's essential features but usually not depicting every part to scale (see T 204/83, OJ 1985, 310). Moreover, nothing in D1 indicated that specifically the ratio had been reproduced to scale in those drawings (see T 748/91, point 2.1.1 of the Reasons).
2.2 Reproducibility of the content of the disclosure
In T 719/12 neither party contested that document (1) disclosed the compound methyl-2-(a-thenoyl)-ethylamine by name. The parties were, however, divided as to whether said compound had been made available to the public. The board referred to the established jurisprudence that the subject-matter described in a document can only be regarded as having been made available to the public, and therefore as comprised in the state of the art pursuant to Art. 54(1) EPC, if the information given therein is sufficient to enable the skilled person, at the relevant date of the document, to practise the technical teaching which is the subject of the document, taking into account also the general knowledge in the field to be expected of him at the time (see T 206/83, OJ 1987, 5). Document (1) merely postulated the compound methyl-2-(alpha-thenoyl)-ethylamine as a potential theoretical product of a Mannich reaction or the steam distillation of the corresponding tertiary amine, but categorically stated that said compound could neither be isolated nor obtained when said reactions were actually carried out, in spite of the use of conditions which were considered favourable for its formation. Thus, the board held that document (1) alone did not make the compound methyl-2- (alpha-thenoyl)-ethylamine available to the public, since the specific attempts to prepare it which were described in said document had failed. Therefore, the board concluded that it had not been made available to the public as no method for its preparation was available at the publication date of the prior art.
3. Non-technical distinguishing features
In T 2191/13 the eighth auxiliary request's first claim was for a method of providing an adhesive composition tailored to specific substrates and processing conditions. The first three steps – providing an adhesive system; selecting a curative, B1/C3; and admixing C3 and B1 – had been disclosed in a document D10 but, the patent proprietor argued, in D10, when C3 was selected as the curative, the fact that it was adapted to specific substrates and processing conditions was not yet known; since that became evident only after gluing and establishing adhesive strength, D10 lacked the feature that selection was targeted in this way. The board disagreed. Even going by the proprietor's interpretation of claim 1, the difference from D10 was purely non-technical, i.e. entirely mental: whereas that claim required that it be known on selecting B that the amount was tailored to specific substrates and processing conditions, in D10 that simply became apparent after, rather than at the time of, selection. The board observed that novelty could not be established on the basis of a distinction made only mentally, i.e. derived solely from pre-existing knowledge and not reflected in the technical features of the claimed subject-matter. It cited the Enlarged Board's ruling in G 2/88 that a claimed invention lacked novelty unless it included at least one essential technical feature distinguishing it from the prior art. It followed from that decision that a feature of a merely mental nature could not be a new technical feature for the purposes of Art. 54 EPC and, therefore, that a claim containing only already known technical features could not be considered novel. This approach was also taken in T 959/98, T 553/02 and T 154/04.
4. First and second medical use
4.1 Purpose-limited product claims and Swiss-type claims – scope of protection
In T 1021/11 the main request comprised two independent claims for the same medical indication of the same substance, one claim drafted in the Swiss-type format and the other claim following the provisions in Art. 54(5) EPC. The application had been pending when decision G 2/08 (OJ 2010, 456) was issued and therefore belonged to the category of applications in which the Swiss-type format could, as a general rule, still be used. As both claim formats were available for the application and claims in both formats were present in the main request, the question arose whether both claim types could be present in a single set of claims. The board concurred with the conclusion reached in T 1570/09 that decision G 2/08 did not give applicants an absolute right to draft two independent claims in one single set of claims for one and the same medical indication of one and the same substance, one of those claims being in the Swiss-type format and the other in the format in accordance with Art. 54(5) EPC. However, it appeared to the board that no prohibition of the coexistence of such claims in one claim set could be deduced from G 2/08 either, as it was silent in this respect. Having carefully examined the reasoning given in decision T 1570/09, the board found that several factors prevented it from objecting to the presence of claims in the two formats in one single set of claims in the case before it. Firstly, it noted that a single set of claims could be governed by provisions of the EPC 1973 and the revised EPC at the same time. Secondly, the continued existence of the Swiss-type format, in parallel to the provisions of Art. 54(5) EPC, was a direct consequence of the transitional arrangement provided for by the Enlarged Board in decision G 2/08. Thirdly, the board saw no reason to prevent an applicant from choosing both available formats during the interim period and considered it justified to do so in one set of claims. Even though the claims in both formats provided patent protection for the same medical indication, there was a difference in the subject-matter of the claims due to their category, in combination with their technical features (T 1780/12, T 879/12). Thus, by filing two patent applications having the same effective date (two parallel applications or parent/divisional or priority/subsequent application) it was possible for an applicant to obtain patent protection for the same second or further medical indication in both available claim formats. The board therefore did not object to the presence of both formats in a single set of claims, as both formats were applicable to the present application. The board noted that no objections had been raised in similar previous cases (see T 396/09 and T 1869/11), even if the issue had not been discussed in those decisions.
4.2 Novelty of the therapeutic application
In T 773/10 claim 1 was directed to a new use of a dialysis membrane for the treatment of multiple myeloma. It was undisputed that document D1 disclosed all the structural features of the dialysis membrane. Art. 54(5) EPC states that Art. 54(2) EPC does not exclude the patentability of any substance or composition, comprised in the state of the art, for use in a method referred to in Art. 53(c) EPC, provided that its use for any such method is not comprised in the state of the art. The board stated that these provisions introduced a special assessment of novelty for purpose-related features. According to the appellant's submissions, the specific use of the dialysis membrane claimed in claim 1 for the treatment of multiple myeloma, i.e. a method of treatment by therapy of the human body, was not comprised in the state of the art. Therefore, it was crucial to determine whether the special assessment of novelty set out in Art. 54(5) EPC might apply to such a membrane and whether the claimed membrane should be considered a "substance or composition" within the meaning of Art. 54(5) EPC. Referring to the "travaux préparatoires" for the EPC 2000 the board had no doubt that decision G 5/83, had focused on new uses of compounds or "substances", i.e. products of the pharmaceutical industry generally referred to as "medicaments" or "drugs". However, showing that the legislative history did not include discussions on new uses of medical products other than compounds or "substances", i.e. products of the pharmaceutical industry generally referred to as "medicaments" or "drugs", could not establish that the legislator had intended to include any such products within the meaning of "substance or composition". The board came to the conclusion that the scope of the term "substance or composition" in Art. 54(5) EPC did not extend to all products for a specific use in a method referred to in Art. 53(c) EPC. The board referred to T 2003/08, which allowed a claim directed to a new use of a column for an extracorporeal treatment. However, in that decision it was not the column as such which had been regarded as the "substance or composition" the new use of which could confer novelty according to Art. 54(5) EPC. Rather, the column contained a ligand constituting the "active" ingredient responsible for the "therapeutic effect". In the board's view, the case before it was different. The claimed dialysis membrane did not contain any further substance or composition which might constitute an "active" ingredient within the meaning of decision T 2003/08. It followed that for the claimed dialysis membrane the exceptional novelty assessment as set forth in Art. 54(5) EPC did not apply. The application was refused.
5. Second (or further) non-medical use – process claims
In T 151/13 the board stated that the purpose of a particular reagent in a known chemical process is not a functional technical feature in the sense of G 2/88 (OJ 1990, 93) and does not render said process novel. According to G 2/88, novelty within the meaning of Art. 54(1) EPC can be acknowledged in cases where the discovery of a new technical effect of a known substance leads to an invention which is defined in the claim in terms of a use of that substance for a hitherto unknown, new non-medical purpose reflecting said effect (i.e. a new functional technical feature), even if the only novel feature in that claim is the purpose for which the substance is used. Document 2 disclosed all the process features of claim 1 of auxiliary request 2. The appellant argued that claim 1 was a use claim in the sense of G 2/88, such that the subject-matter thereof was novel over document (2) in view of the previously undisclosed technical effect of the use of superatmospheric partial pressure of hydrogen chloride, without the substantial removal of water during the contacting step, in order to reduce the level of 1,2,3-trichloropropane, chlorinated ethers and oligomers in the product. The board held that the otherwise identical process disclosed in document (2) had to result in the same levels of 1,2,3-trichloropropane, chlorinated ethers and oligomers being produced as in the process defined in the claim, i.e. there was no reduction in the level of these compounds vis-à-vis example 1 in document (2).
C. Inventive step
1. Closest prior art
1.1 Determination of closest prior art in general
In ex parte case T 2517/11 the appellant's main grievance in its appeal against the examining division's decision to refuse its application claiming methods of transform-based coding/decoding with adaptive windows was that it was based on a hidden technical feature in the closest prior art (D1) that could only be detected by a mathematical analysis. The board held that the examining division's mathematical analysis had indeed shown that the method according to D1 included the feature of equivalent analysis and synthesis windows, and that this feature therefore had to be regarded as having been made publicly available.
Citing G 1/92 (OJ 1993, 277, point 2 of the Reasons) in particular, the board held that the fact that a technical feature of a known method was "hidden" – i.e. implicit in a prior-art document and not identifiable on a mere reading of that document – and could be detected only by way of a mathematical analysis did not mean that it could not be taken into account as a disclosed feature. If an analysis revealed such a "hidden" feature, that showed it was publicly available; whether there had been any objective reason to carry out the analysis was irrelevant (see point V and point 5.2.1 of the Reasons). This followed from the objective nature of the problem-solution approach developed in the boards' case law, which entailed consideration of all technical features comprised in the closest prior art, regardless of whether they were directly identifiable or hidden, since even hidden features were publicly available. On a different aspect of the examination of inventive step, however, the board disagreed with the examining division's finding of obviousness. Having reformulated the problem and taken D2 into account, it observed that, even if, as the examining division had interpreted it, D2 had proposed using either of the two alternatives, i.e. symmetric or dissymmetric windows, that in itself was not enough to find that the appellant's solution was obvious. Only if its application had treated those two alternatives as equivalents could its solution – which it would then have chosen arbitrarily between two technically possible equivalents – be considered obvious. The application, however, highlighted the advantages of using dissymmetric windows and so amply showed that this was not the case.
In ex parte case T 1742/12, in an annex to the summons to oral proceedings, the board informed the appellant of its preliminary opinion that the claimed invention lacked an inventive step over D1. The applicant (appellant) argued that the board had applied the problem-solution approach incorrectly because D1 was not "the closest prior art" as understood in the established jurisprudence of the boards of appeal. D6, introduced by the appellant, was closer than D1. The appellant requested "that questions be referred to the Enlarged Board of Appeal", question 1 including the following: "1. Where there are multiple pieces of prior art which could be considered to be the closest prior art in the sense required by the problem-solution approach, is it ever legitimate to start from multiple different alleged closest prior art documents, or must a single piece of prior art be identified as the closest?" According to the board, if a piece of prior art can be identified as the "closest" prior art or the "most promising springboard" and it can be shown that, starting from this prior art, the claimed invention is non-obvious, then the claimed invention can only be even less obvious starting from any other piece of prior art, and therefore a detailed inventive step assessment starting from the other prior art can be dispensed with. According to the appellant, the board was obliged to choose the "closest prior art" and not merely "a suitable starting point". The board disagreed and endorsed rather the findings in T 967/97 and T 21/08. In these decisions it was found that if the skilled person had a choice of several workable routes, i.e. routes starting from different documents, which might lead to the invention, the rationale of the problem-solution approach required that the invention be assessed relative to all these possible routes, before an inventive step could be acknowledged. Conversely, if the invention was obvious to the skilled person in respect of at least one of these routes, then an inventive step was lacking. In T 967/97 it was further stated that, if an inventive step was to be denied, the choice of starting point needed no specific justification. The board recalled also the teaching of T 710/97 and T 824/05. It may happen that a piece of prior art is so "remote" from the claimed invention, in terms of intended purpose or otherwise, that it can be argued that the skilled person could not conceivably have modified it so as to arrive at the claimed invention. Such prior art might be referred to as "unsuitable". However, in the board's judgement, this did not prohibit the consideration of an inventive step assessment starting from a piece of prior art with a different purpose. If an argument showing that the claimed invention was obvious over some prior art, this argument could not be refuted merely by the introduction of another piece of prior art. Furthermore, the board decided not to refer questions to the Enlarged Board of Appeal.
1.2 Selection of most promising starting point
In T 1841/11 the claimed invention related to a method for manufacturing a silicon germanium on insulator (SGOI) substrate. The board considered that the purpose or objective of the claimed invention was to provide a method for manufacturing a semiconductor substrate comprising a SiGe film. In the contested decision, the closest prior was considered to be document D2, which disclosed a method of manufacturing a substrate comprising a Ge film formed by a CVD process. The board had to decide whether document D2 could be accepted as the starting point for assessing inventive step given that methods for manufacturing a substrate comprising a SiGe film were known in the prior art.
The board stated that the closest prior art should relate to the same or at least a similar purpose (or objective) as the claimed invention. Even if prior art relating to the same purpose is available, it is not excluded that a document relating to a similar purpose might be considered to represent a better - or at least an equally plausible - choice of closest prior art, provided that it would be immediately apparent to the skilled person that what is disclosed in the document could be adapted to the purpose of the claimed invention in a straightforward manner, using no more than common general knowledge (point 2.6 of the Reasons).
If, despite the availability of prior art relating to the same purpose as the claimed invention (here: manufacturing a semiconductor substrate comprising a silicon-germanium film), it is nevertheless considered appropriate to select as closest prior art a disclosure relating to a similar purpose (here: manufacturing a semiconductor substrate comprising a germanium film), at least one claimed feature corresponding to the purpose of the invention will generally appear as a difference over the closest prior art (here: silicon-germanium).
However, this difference is not one which can legitimately be invoked in support of inventive step. The problem-solution approach presupposes that the skilled person has a purpose in mind from the very beginning of the inventive process, which in this case is the manufacture of a known type of semiconductor substrate comprising a silicon-germanium film. Within this conceptual framework, it cannot be logically argued that the skilled person would find no motivation to incorporate silicon-germanium. Moreover, an argument that it would not be straightforward to incorporate this difference into the teaching of the document considered to be closest prior art, or that this would require more than common general knowledge, would not, in such a case, constitute an argument in favour of inventive step, but rather an argument that this document is not in fact a promising starting point (point 4.1 of the Reasons).
2. Technical problem
2.1 Determination of the technical problem
Analysing G 2/08 and G 2/88, the board in T 943/13 came to the conclusion that the causal relationship between the substance or composition on the one hand and the therapeutic effect achieved on the other hand was decisive for the assessment of inventive step of further-medical-use claims. The board considered that the objective technical problem was the provision of the claimed therapeutic effect by a different/alternative means. The opponent argued that the objective technical problem was the provision of an alternative composition. The board acknowledged that the objective technical problem might indeed be the provision of an alternative composition if claim 1 was a "normal" product claim directed to a substance or composition. However, claim 1 was formulated as a further medical use claim directed to a substance or composition for use in a therapeutic application.
2.2 Reformulation of the technical problem
As to whether evidence had been provided that the claimed subject-matter provided a successful solution to the problem mentioned, the respondent (patent proprietor) referred to three comparative tests of the patent in suit. In T 568/11 the board referred to the established case law of the boards of appeal, according to which where comparative tests are chosen to demonstrate an inventive step on the basis of an improved effect, the nature of the comparison with the closest state of the art must be such that the alleged advantage or effect is convincingly shown to have its origin in the feature distinguishing the invention from the closest state of the art. The board stated that the comparative tests relied on by the respondent (patent proprietor) were not based on compositions which differed only in the feature meant to distinguish the claimed subject-matter from the closest prior art. The respondent nevertheless argued that the additional differences between the compositions to be compared were so minimal that they would have no influence on the properties of the composition. Since the respondent did not present corroborating evidence or an explanation making it credible that the purported technical benefit was achieved, the alleged advantage of the claimed aqueous compositions over the closest prior art could not be taken into account. The technical problem solved over the closest prior art by the claimed subject-matter as proposed by the respondent could not be accepted and needed to be reformulated.
3. Ex post facto analysis
In T 2201/10, the board found that the examining division had taken an ex-post-facto approach to analysing the facts. Even assuming that the proposed solution could be derived from common general knowledge, it went against the very essence of the teaching in the closest prior art and, therefore, would not realistically have been chosen. The problem and solution approach required that documents not relating to the technical field of the invention be disregarded, and it also precluded any analysis according to which the skilled person would have modified the closest prior art in a manner contrary to its very purpose. In other words, a finding that a claimed invention deviated from what was, in light of the aim pursued, the essence of a prior art disclosure was enough by itself to conclude that it was inventive over that prior art.
4. Reasonable expectation of success, especially in the field of genetic engineering and biotechnology
In T 1577/11 claims 1 and 2 related to the use of anastrozole for the reduction of the rate of recurrence of cancer or for the reduction of the rate of a new contralateral primary tumour in post-menopausal women with early breast cancer. The treatment was further characterised in that anastrozole was provided in the absence of tamoxifen. The board agreed with the opposition division that, in view of the closest state of the art, the problem to be solved was the provision of means for reducing the rate of recurrence of cancer and the rate of formation of a new contralateral primacy tumor in post-menopausal woman with early breast cancer in a more efficacious way. The board was satisfied that the problem was plausibly solved. It remained to be decided whether the proposed solution was obvious to the skilled person in the light of the prior art. According to the appellant, a person skilled in the art had no reasonable expectation of success because of the absence of a reasonable expectation of the superiority of anastrozole over tamoxifen, which at the time the invention was made was the gold standard in endocrine treatment of early breast cancer. The appellant argued that advanced and early breast cancer were two different diseases which required different clinical management. Thus, extrapolation of results from advanced to early breast cancer treatment was not possible. The board disagreed. At the time the invention was made, the use of tamoxifen in the treatment of advanced and early breast cancer was well known in the art. The skilled person was also aware of the superiority of anastrozole over tamoxifen in the endocrine treatment of advanced breast cancer. The board was of the opinion that advanced and early breast cancer were not different diseases, but different stages or phrases of progression of the same disease. The board concluded that the skilled person would have had a reasonable expectation that anastrozole would be more efficacious than tamoxifen in the endocrine treatment of early breast cancer. In reply to further arguments of the appellant, including that the use of anastrozole was not indicated outside the framework of clinical trials, the board referred to the established jurisprudence of the boards of appeal, which clearly distinguishes between reasonable expectation of success and certainty of success, and according to which certainty of success is not required. The board added that the advice in document (38), that the use of anastrozole was not indicated outside the framework of clinical trials, reflected the cautious approach of oncologists in the absence of clinical data. It did not constitute evidence that there was no reasonable expectation of success.
5. Assessment of inventive step
5.1 Technical character of the invention
In T 339/13 the application was concerned with a virtual pet that was capable of giving "haptic feedback" producing, for instance, tactile sensations, such as vibrations or pulses, or visual/audio effects. The appeal was against the decision of the examining division refusing the application for lack of inventive step. The independent claims of the auxiliary request specified, inter alia, that the user interacting with the virtual electronic pet moves a cursor back and forth over the display of the virtual pet and, in response to this movement and varying with it, receives a periodic vibration as a haptic sensation. This interaction was modelled on a real interaction of an owner with an actual pet, more specifically on the response of a cat to its owner petting it. The board noted that the owner of a toy had to be willing to accept the toy's behaviour as real. The board accepted that in the context of virtual pets achieving the reliable and reproducible perception of a physical interaction with the real pet was a technical problem. Moreover, the board found that the invention solved this problem with technical means, more specifically, in terms of the technical features of the device interface, namely a reciprocating cursor movement and haptic feedback. The board concluded that the subject-matter of the auxiliary request involved the required inventive step over the prior art.
In T 690/11 the board agreed with the appellant that, in accordance with the established jurisprudence of the boards of appeal, non-technical features should be disregarded in the assessment of inventive step. It was therefore crucial to establish whether or not the features of claim 1 possessed a technical character. The invention concerned a dialysis system which comprised a display device, a web server and web browser operating with the display device to display information that could guide an operator through the setup procedure for performing a dialysis treatment and then illustrate the progress of that treatment. In the board's opinion, the claimed features possessed more than mere information content directed exclusively to the human mind. The displayed information was not solely defined by its information content, but was inextricably linked to the operation of the claimed system. The operation of the system would not be possible without the operator input that was required by the claimed dialysis therapy set-up procedure screens. Moreover, the display of the dialysis treatment screens in real time amounted to technical information pertaining to the state of the dialysis system during the treatment, and assisted the operator in monitoring the correct operation of the claimed system, which was, as such, a technical task. In other words, the claimed display of a plurality of dialysis therapy set-up procedure screens and a plurality of dialysis therapy treatment screens related to the interaction between the system and the operator and, hence, implied technical means for the transmission and handling of respective signals contributing to the correct operation of the system. This conferred a technical character on the claimed features. Accordingly, the claimed features were to be duly considered in the assessment of novelty and inventive step.
In T 483/11 the board did not dispute that the claimed method appeared in a technical context. The method was performed by technical means (one or more servers of a network), and therefore had technical character. The board noted, however, that the question of inventive step required an assessment of whether the invention makes a technical contribution over the prior art (T 641/00). In the case at issue, the contribution of the invention did not lie in the use of document summarisation in a mobile communication system. That was already in the prior art. The contribution lay rather in the algorithm for extracting summary information from the electronic document. In the board's view, this was not technical. It was a mental act, such as would be performed by a human when reading a text. The board did not share the appellant's view that a feature automatically inherits the technical character of the context in which it occurs. The feature had, itself, to make a contribution to the technical context, or the technical aspects of the invention. Thus, the invention lacked inventive step (Art. 56 EPC).
5.2 Assessment of features relating to a presentation of information
In T 651/12 the examining division had held that the subject-matter of claim 1 according to the main request lacked an inventive step. The board pointed out that the main request essentially related to the technical implementation in a map display apparatus of the method for displaying a bird's eye view map set out in claim 6. The subject-matter of claim 6 was not excluded from patentability under Art. 52(3) EPC, as it did not relate to such subject-matter or activities as such. Indeed, since claim 6 was directed at a computer-implemented method, it involved the use of technical means in the form of a computer and thus, according to established jurisprudence of the boards of appeal, was an invention within the meaning of Art. 52(1) EPC (cf. T 258/03, OJ 2004, 575). What were meant in Art. 52(2)(a) EPC were merely abstract mathematical methods, i.e. calculations for the sake of the calculation. In the case at issue, however, the outcome of the calculation was used for a technical purpose, namely to display information in an ergonomically improved manner. The board further stated that also the calculation as such in that case had in the board's judgement clear technical aspects. Steps a to c in claim 6 produced the technical effect of reducing the need for data storage and enhancing the calculation speed, and were, thus, considered to provide a technical solution to a technical problem. Accordingly, concerning both displaying the three-dimensional bird's eye view map and the calculation steps, claim 6 was considered to relate to technical subject-matter. The board noted that ergonomics, understood as the applied science of refining the design of products to optimize them for human use, in the context of the map display in the case in hand, was a technical field. Displaying the three-dimensional bird's eye view map was thus considered to provide a technical solution to a technical problem. Moreover, it was noted that in the context of e.g. a car navigation system, the immediate apprehension of the presented information resulted in the driver being less distracted from the road and traffic and, thus, also added to safety. Accordingly, also in this respect, displaying the three-dimensional bird's eye view map provided a technical solution to a technical problem. The three-dimensional bird's eye view did not provide merely a more orderly or appealing presentation of map data, but a presentation which was ergonomically adapted to the needs of the user, e.g. a driver of a car. Finally, the board noted that the level of technical detail and complexity of this technical subject-matter went beyond what could reasonably be held to be notorious. Therefore, it was necessary to remit the case to the examining division to have an additional search done before any grant of a patent might be decided.
In T 1375/11 the board pointed out that the claimed gaming and/or entertainment device was apparatus, meaning it had to be seen as having technical character. Nonetheless the examining division had found that it had some non-technical features, which therefore made no technical contribution over the closest prior art. The board concluded that the claim defined an invention mixing technical with non-technical features, and so the relevant question was what problem the feature distinguishing it from the closest prior art solved, and whether that problem was technical (see T 641/00). Here it agreed with the appellant that the problem underlying the claim was how to improve user ergonomics – specifically how to improve the visibility of bets placed, thereby increasing user convenience in order to enable users to play fatigue-free while also continuously keeping track of play progress. The board was in no doubt that how to improve ergonomics was a technical problem, citing the boards' case law (T 1296/05) as confirmation. Its position was also consistent with the approach taken in T 862/10, in which it had been held, in the context of a claim including an audio signal "[localised] … in a position at or near the location of the physical rendering of the display object" with a view to making it easier for users to locate the display object on screen, that both the problem and its solution were technical because they depended not on psychological or subjective factors, but on technical parameters (based, among other things, on human physiology) that could be precisely defined. Since, in the case in hand too, the problem to be solved was defined not by psychological or subjective factors, but physiological ones such as eye fatigue and low visibility, the board considered that this earlier decision supported its finding that the distinguishing feature and the problem underlying the invention were of a technical nature. After considering the available prior art, the board concluded that the claimed subject-matter involved an inventive step within the meaning of Art. 52(1) and 56 EPC.
5.3 Combination of documents
In T 454/13 the invention concerned a sample block apparatus and a method for maintaining a microcard on a sample block. The problem to be solved consisted in improving temperature uniformity between the plurality of samples on a single microcard. According to appellant 2 (opponent), the solution was obvious in view of any of documents D6 to D8 and also in view of document D4. Concerning D6 to D8, the board observed that they were from a technical field remote from the field of biological testing, i.e. these documents all concerned the manufacturing of semiconductor devices and therefore could not give any hint as to how to solve the problem of improving temperature uniformity between a plurality of samples of biological material located on a microcard. Appellant 2 argued that D1 proved that it was common general knowledge that similar problems arose in the fields of semiconductor manufacturing and biological testing. D1 was, however, a single patent specification which on its own failed to prove common general knowledge. The board noted that D1 indeed taught that the device disclosed therein might be used in thermal cycling of substrates such as semiconductor wafers as well as in thermal cycling in PCR processes. This, however, did not mean that the skilled person would look for solutions in the field of semiconductor manufacturing when faced with the specific problem of increasing temperature uniformity between a plurality of biological samples on a microcard. As the issue of biological samples was not normally encountered in the field of semiconductor manufacturing, he would have no incentive to look for a solution in that field. For the sake of completeness, the board also observed that D1 only mentioned PCR processes but was silent as to a microcard having a plurality of biological samples thereon, i.e. a system wherein temperature non-uniformity between individual sample chambers in a microcard could possibly occur. The board concluded that the skilled person would have been dissuaded from consulting documents D6 to D8.
II. PATENT APPLICATION AND AMENDMENTS
In T 81/14 the board held that when considering the definition of a product in terms of its production process the principles developed in the jurisprudence for the product-by-process claims are in general to be applied, also in the case of a claim directed to the use of that product. Claims 1 to 7 of one of the auxiliary requests were directed to a method of producing a sintered cemented carbide body. Claim 8 was directed to the use, for the production of a cutting tool, of a sintered cemented carbide body obtained according to the method of any one of claims 1 to 7. Hence, claim 8 comprised process and product features and was notionally equivalent to a claim directed to a process for the production of a cutting tool using the sintered cemented carbide body (see G 2/88, point 5.1 of the Reasons, OJ 1990, 93). Although the claim was not directed to a product but to a process, the board stated that the principles underlying the assessment of the clarity of product features should not depend on whether such product features appear in a claim directed to a product or in a claim directed to a process. Applying the principles developed in the jurisprudence for product-by-process claims to claim 8, the board stated it would have been possible to define the sintered body in terms of structural features, namely composition, microstructure and mechanical properties. Accordingly, the use of a product-by-process definition in claim 8 resulted in a lack of clarity.
According to the board, the technical contribution does not normally reside in the fact that the problem is solved, but rather in the combination of features by which it is solved, i.e. in the essential features necessary to solve the technical problem underlying the application. If an independent claim contains a feature defined by a result to be achieved which essentially corresponds to the problem underlying the application, then in order to comply with Art. 84 EPC 1973 the remaining features of the claim must comprise all essential features necessary for achieving that result. In the case in hand, these requirements were not met and the board dismissed the patent proprietor's appeal.
In T 1722/11 one of the claims related to a computer program resident on computer-readable media and defined this program by reference to a method claim. The board noted that the execution of the first step in the method claim, i.e. "providing the content to users' devices via a communications network, said provision of content requiring usage of network resources", required co-ordinated interaction between various resources in the communications network, in particular between a content transmitter, a transmission channel, and a content receiver, in which each of these resources was at a different, mutually remote location. It was therefore unclear how this step could be executed solely by a (single) computer program, when run on a computer, and, hence, it was unclear to what extent this step defined the claimed computer program. The same applied to the last feature of the method claim, i.e. "wherein the parameters for delivery of at least one message to the user's device include a schedule of times for delivery of the at least one message relative to use of the content by the user's device", since this feature merely further specified the parameters for delivery, without making it clear to what extent this specification of parameters defined or limited the claimed computer program. Therefore, the claim relating to the computer program was deemed to lack clarity.
The board in T 1871/09 applied a general principle of interpretation (of which Art. 69 EPC was just one illustrative example), namely that parts of documents must not be taken out of context and that the meaning of a given wording must instead be established in the light of the document as a whole. It is therefore impermissible to take one passage in the description over another, in order to give certain terms a particular hue.
The board pointed out that account also had to be taken of the specificity of the patent specification, given that the purpose of the claims was to generalise the specific embodiments it actually disclosed. To what extent this might influence the claims' interpretation depended on the circumstances of the individual case, but at any rate it had to be presumed that the terms in the claims had been chosen with this purpose in mind. Thus, where a proprietor had omitted, whether deliberately or not, to define certain concepts, or been content to leave certain ambiguities in the description supporting his request, he could not subsequently take refuge behind a restrictive interpretation of the terms in the claim, especially if a more general interpretation made technical sense and was compatible with the patent's general teaching.
The board found that the method claimed in this case had been generalised beyond its literal interpretation. It was regrettable that the description had not been adapted to the claims found patentable by the examining division, as this had above all left the method somewhat unclear, but the patent version the proprietors wished to rely on was wholly their responsibility. Even if no clarity objection (Art. 84 EPC 1973) could be raised under Art. 100 EPC 1973 against the patent as granted, the proprietors nevertheless had to accept that the opponents might seek to exploit any contradictions, ambiguities or imprecisions, in particular with a view to benefiting from any broadening of the claims' scope they might allow. The board ultimately agreed that the prior art anticipated the claimed method as it had to be interpreted in the light of the description.
B. Unity of invention
1. Single general inventive concept
In T 2248/12 the supplementary European search report was limited to the invention first mentioned in the claims, i.e. the Apo-2 ligand (Apo2L) variant "S96C". The examining division refused the application, having concluded that the two claimed Apo2L variants R170C and K179C, not covered by the search report, lacked unity a posteriori in view of the disclosure of D1 in combination with that of D4 with regard to the variant S96C, because the concept, i.e. the "special technical features" linking the three variants, was not inventive (cf. Art. 82 EPC, and R. 137(4) and 164(2) EPC as then applicable).
The board stated that the assessment of unity of invention required as a precondition the analysis of the technical problem or problems underlying the respective groups of inventions, because only then was it possible to decide whether the same or corresponding special technical features existed for the different embodiments. The variants R170C and K179C differed from those of D1 in that the native amino acid residue at each position was substituted by cysteine. S96C was not disclosed in D1.
The "special technical features" vis-à-vis D1 common to the three variants were that (i) the residues present at the three positions in the native protein were substituted by a cysteine, (ii) the three positions lay outside the receptor contact region of Apo2L in a binding complex with DR5, and (iii) these positions displayed a high solvent accessibility. The resulting technical effects were that the three variants were readily PEGylated, and yet substantially retained their biological activity, i.e. they bound to their receptors and induced apoptosis. Thus, the underlying technical problem was the provision of Apo2L variants which were readily PEGylated and biologically active.
D1 was not concerned with revealing positions in Apo2L characterised by a high solvent accessibility allowing a PEGylation which did not significantly interfere with the biological activity of the protein but rather with the identification of positions affecting trimer formation and stability of Apo2L. Consequently, a potential substitution of the native residues at these positions with cysteine was not derivable from D1.
D4 disclosed the advantages of PEGylation for therapeutic proteins in general and also that the amino acid cysteine was one of the possible linking partners. It further drew the skilled person's attention to the potential risk of losing the biological activity of a protein when trying to improve its pharmacokinetics by conjugation to PEG and reported in this context that "[t]he same mechanism that prevents the approach of proteolytic enzymes or antibodies to PEGylated protein can also reject a substrate from the protein active site". However, suggestions as to how to avoid or minimise such a risk for therapeutic proteins known to be involved in protein-protein interactions, let alone for Apo2L in particular, were not derivable from D4.
Therefore, neither D1 alone nor D1 and D4 in combination disclosed or suggested the common concept underlying the three variants, i.e. having modified cysteine residues at positions lying outside the receptor contact region of Apo2L which concomitantly displayed high solvent accessibility and thereby allowed a ready conjugation to PEG without significantly reducing the biological activity of the proteins.
The concept by which the three variants were linked was new and inventive and to be considered a "single general inventive concept". Hence, they fulfilled the requirements of unity of invention, and the subject-matter of claim 1 relating to the variants based on R170C and K179C fulfilled Art. 82 EPC. Although both claimed variants related to unsearched subject-matter, both combined with the searched variant S96C to form a "single general inventive concept" and so R. 164(2) EPC and R. 137(4) EPC were also met.
2. Unsearched subject-matter – applicability of Rule 137(5) EPC
In T 1126/11 the application related to the pre-processing of a command on a portable data carrier featuring an integrated circuit. When it was found to lack unity, the applicant had paid additional search fees for the second and third inventions but not for the fourth. A new claim 1 filed during examination included a feature from the original (dependent) claim 12, which was part of the unsearched fourth invention. Under R. 137(5) and (3) EPC the examining division had not admitted the amended set of claims, and under Art. 78(1)(c) and 113(2) EPC it had refused the application because there were no claims.
The board observed that when an examining division investigated whether unsearched subject-matter was linked to the originally claimed invention or group of inventions by a single general inventive concept, the basis for its decision had to be R. 137(5) EPC. There was no need to apply R. 137(3) EPC. In the case in point the amended claims did indeed relate to unsearched subject-matter, but they were linked to the originally claimed invention or group of inventions by a single inventive concept. There were cases where dependent claims too could form inventions or groups of inventions, but this was not one of them. The single inventive concept was clear from the sole embodiment, and the invention was generalised in the description too. Unity of invention was also evident from the consideration that if a document relating only to the alleged fourth invention were to be searched, it would most probably also be relevant for claim 1 and the other alleged inventions. Accordingly, the additional search fees were to be reimbursed.
C. Sufficiency of disclosure
1. Parts of the application relevant for assessing sufficiency of disclosure
In ex parte case T 206/13 the board could not accept the appellant's submissions to the effect that preferred or optional features defined in a claim should be disregarded in the assessment under Art. 83 EPC. According to the established case law the requirement of sufficiency of disclosure defined in Art. 83 EPC was only complied with if the disclosure of the invention allowed the skilled person to perform, without undue burden, essentially all the embodiments covered by the claimed invention. This applied in particular to the specific particular embodiments of an invention defined in dependent claims pursuant to R. 43(3) EPC and, by the same token, to any optional feature defined in a claim since such a feature also constitutes, by its very nature, a particular embodiment of the claimed invention, irrespective of whether the optional feature is described as being "preferred" or not.
2. Clarity and completeness of disclosure – parameters
In T 147/12, concerning the allegation of insufficiency of disclosure by the appellant (opponent), the objection of the appellant was not that there existed no method of determination of the alkali metal content in polyethers. Rather, the gist of the appellant's argumentation was that D7 (scientific publication), D8 (a study) and D11 (experimental report provided by the opponent) showed that the value obtained for the alkali metal content in the polyether depended on the analytical method used for its determination. Since the patent in suit did not mention which method had been used to determine the alkali content, the skilled person could not perform a reproducible determination of that alkali content and as a result could not know whether he was working within the ambit of claims, resulting in an insufficient disclosure of the claimed subject matter. Concerning D11, the board stated that even if D11 showed that the conditions of measurement might lead to variations of the value of the alkali metal content as argued by the appellant, this alone did not constitute a lack of sufficiency of disclosure regarding the claimed subject-matter as a whole since it had not been shown that the uncertainty concerning the alkali metal content affected the claimed process to such an extent that the skilled person wishing to perform the process would face an undue burden. The appellant had shown that the uncertainty concerning the method of determination of the alkali metal content meant that the skilled person could not ascertain whether the value he would obtain was within or outside the claimed range. It was, however, not shown that as a result of that uncertainty, the skilled person would fundamentally be prevented from obtaining a polyether according to claim 1. The board stated that T 83/01 (skilled person not in a position to perform any measurement of the claimed parameter) and T 815/07 (test method defined in claim 1 resulting in totally arbitrary values) were not applicable to the present case.
In ex parte case T 2001/12 the application related to a memory device and its reading method. The question arose whether the allegation that the claimed invention was incapable of achieving a technical effect mentioned in the description but not comprised in claim 1 (reducing the voltage for writing and erasing to approximately 70% or less of that of a conventional planar type device) would – even if true – justify refusing the application for failure to meet the requirements of Art. 83 EPC.
The board referred to G 1/03 (OJ 2004, 413), where the Enlarged Board of Appeal stated the following:
‒ "a lack of reproducibility of the claimed invention ... may become relevant under the requirements of inventive step or sufficiency of disclosure. If an effect is expressed in a claim, there is lack of sufficient disclosure. Otherwise, i.e. if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step (T 939/92, OJ 1996, 309)."
This passage had since been cited in other decisions; for example in T 1079/08 the point was made as follows: "In Decision G 1/03 (OJ 2004, 413) the Enlarged Board of Appeal indicated that a lack of reproducibility of the claimed invention is relevant under the requirements of sufficiency of disclosure if the technical effect is a technical feature of the claim, since then it is a feature characterising the subject-matter claimed (see point 2.5 of the Reasons)."
The same point had been made in earlier decisions, for example in T 939/92 (cited by the Enlarged Board in the above excerpt from G 1/03), and in T 260/98 (also citing T 939/92) in which the following conclusion was drawn: "However, since the claims only specify a reduced abrasiveness and do not require any synergistic activity of the components, the question as to whether or not such a synergic effect is achieved by the claimed printing inks is not relevant to the issue of sufficiency, although it may properly arise under Art. 56 EPC, if this technical result turns out to be the sole reason for the alleged inventiveness of the printing inks (T 939/92)."
Thus, an objection of insufficient disclosure under Art. 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.
Since the technical effect in question (the reduction of the writing and erasing voltage to 70% or less of the program voltage of a conventional planar type device) was not part of the invention defined by claim 1, the objection that the application as a whole did not disclose features which would enable this effect to be obtained did not constitute a valid objection under Art. 83 EPC 1973 (see point 3.4 of the Reasons).
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 Art. 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 Art. 56 EPC 1973 may be raised (point 4.4 of the Reasons), possibly requiring a reformulation of the problem.
3.2 Reproducibility without undue burden – trial and error
In case T 2220/14, in the board's view, since the technical field to which the invention related was highly complex (methods of modifying eukaryotic cells), the average amount of effort necessary to put a written disclosure into practice in this field would be rather high and involve a considerable amount of trial and error. The board added that there is no requirement in the EPC, either at the priority or filing date, that the applicant must have carried out the claimed invention. The requirement of Art. 83 EPC is that a person skilled the art, following the teachings in the application as filed supplemented with his/her common general knowledge and with a reasonable amount of experimentation, including some trial and error would be able to carry out the invention as claimed at the relevant date. The board concluded after detailed technical reasons that it had no reason to doubt that the invention as claimed in claims 1, 5 and 6 was sufficiently disclosed as required by Art. 83 EPC.
3.3 Post-published documents
In case T 1329/11 the respondents (patent proprietors) referred to post-published documents, in particular to document D8 published more than five years after the priority date, in order to show that the claimed method worked. It is the established case law of the boards of appeal that post-published evidence may not be used to establish sufficiency of disclosure. Such evidence may only be used to back up a finding of sufficiency of disclosure. Therefore, the contents of documents which were not available to the skilled person at the priority date cannot help to overcome the major problem of sufficiency of disclosure of the claimed invention at the priority date.
The board also could not accept the respondents' argument that the claimed invention was sufficiently disclosed because the appellant (opponent) did not present verifiable facts that it did not work. Although, generally, the burden of proof in the framework of sufficiency of disclosure lies with the appellant (opponent), this principle did not apply to cases like the present one, where the application as filed did not provide a single example or other technical information from which it was plausible that the claimed invention could be carried out.
The requirement of sufficiency of disclosure was not complied with. Consequently, the main request was refused pursuant to Art. 83 EPC.
In T 2059/13 the opposition division had revoked the patent in suit (for insufficiency of disclosure), basing its decision, in particular, on a finding made in T 609/02 (point 9 of the Reasons). The appellant (patent proprietor) argued that the case in hand differed from T 609/02, in which the chemical structure of the compounds had not been identified. The board, however, considered that the finding relied upon by the opposition division was of a more general nature; it was not limited to cases where the chemical structure of compounds was not identified and related to therapeutic uses of chemical compounds in general.
The board therefore held that maintenance of a patent claiming a compound for use in therapy (here: aripiprazole against bipolar disorder) would be prejudiced on grounds under Art. 100(b) EPC if the application did not disclose the suitability of the product for the claimed therapeutic application to the skilled person using his common general knowledge. Only once evidence of this suitability was available from the patent application could post-published evidence be taken into account when assessing sufficiency of disclosure. For these reasons, in order to assess sufficiency of disclosure in this case, it had to be determined (i) to what extent the disclosure in the patent in suit and, more importantly, in the application as filed revealed the suitability of the compounds in question for the claimed therapeutic application; (ii) to what extent the skilled person was able to supplement this disclosure with his common general knowledge; (iii) to what extent the pre-published documents cited by the parties were to be considered common general knowledge; and (iv) whether any alleged deficiency in the disclosure of the patent in suit could be cured by post-published evidence. Assessing these aspects, the board considered that none of the sections of the patent as disclosed at its filing date plausibly showed that any of the claimed formula compounds were suitable for treating any type of bipolar disorder. Nor did they provide information that there was a clear relationship between 5-HT1A receptor agonism and suitability for treating bipolar disorder. Turning to the common general knowledge, the board observed that, according to the boards' established jurisprudence, it comprised basic handbooks and textbooks on the subject in question but did not normally include patent literature and scientific articles (T 766/91; T 1253/04). The appellant argued that documents (D2), (D8), (D43) to (D45) and (D47) reflected the common general knowledge and that these documents showed that there was a direct relationship. Document (D8) was a postgraduate medicine special report. Documents (D43) to (D45) and (D47) were articles published in scientific journals. In the board's view these documents did not generally reflect the common general knowledge (T 1253/04) and the appellant had not put forward any argument as to why, in the present case, such documents could exceptionally be regarded as common general knowledge. There was no evidence on file showing that the skilled person was in possession of common general knowledge at the filing date of the patent in suit which, together with the disclosure of the application as filed, led to the direct and unambiguous conclusion that any of the compounds of formula (1), in particular, were useful in the treatment of any type of bipolar disorder. Hence, the application as filed, in combination with the common knowledge at the filing date, did not disclose the suitability of any of the compounds of formula (1) in the treatment of any type of bipolar disorder. Consequently, the minimum requirements set out in T 609/02 for taking post-published evidence into account were not met. Maintenance of the patent was prejudiced on grounds under Art. 100(b) EPC.
4. The requirement of sufficiency of disclosure in the biotechnology field
4.1 Level of disclosure required for medical use
In T 895/13 the board stated that, pursuant to decision T 609/02, attaining the claimed therapeutic effect was a functional technical feature of a claim drawn up in the Swiss-type form. In the board's view, the same principle applied to purpose-related product claims drawn up in accordance with Art. 54(5) EPC. Accordingly, the examination of the therapeutic effect provided by the claimed subject-matter was to be made in the context of the assessment of sufficiency of disclosure and not in the context of the assessment of inventive step, as in the decision under appeal.
4.2 Deposit of living material
In case T 2542/12, concerning a new bacterium causing Cod's syndrome in cod or in fish, the examining division refused the patent application because the subject-matter was insufficiently disclosed (Art. 83 EPC). The appellant (applicant) argued that the disease was widely known among fishermen and breeders in Norway and Sweden in the year 2004 and that re-isolation of the micro-organism was therefore readily possible by obtaining an infected fish from a fish farm or a fisherman. Affected fish were collected from 4 different farms in western Norway.
The board, in compliance with T 2068/11, stated that only if biological material is not available to the public and cannot be described in the European patent application in such a manner as to enable the invention to be carried out by a person skilled in the art is a deposit with a recognised depositary institution required. Therefore the question arose in the case at issue whether the claimed micro-organism was sufficiently disclosed without a deposit. At the priority date, unless the skilled person had personal knowledge of Swedish fishermen or Norwegian cod farms, he had no indication where to start looking for infected fish. A more important point was that cod farms are commercial entities which are not freely accessible and under no obligation to share their diseased fish with anybody asking for a sample. They may do so. They may, however, also refuse to do so. This is one of the reasons why the patent legislator, in order to provide unrestricted and continued access, foresaw the deposit of a claimed micro-organism under the provisions of R. 28 EPC 1973. Commercial fish farms do not constitute a reliable source of infected fish because they are under no obligation to share any of their diseased fish. Swedish fishermen as described in document D6 are also not a source for reliably obtaining infected fish. They are a possible source; there is, however, no guarantee that by contacting any of them one could reliably and continuously obtain a fish infected with the claimed micro-organism. The appellant argued that diseased fish had been sent to several public veterinary institutes in Norway and Sweden without any restrictions. This may well have been the case. It did not, however, in the board's view demonstrate a guaranteed access to suitable samples either.
The board concluded that under these circumstances, the invention could only be regarded as sufficiently disclosed if a sample had been deposited according to the relevant legal requirements. Furthermore, the board concluded that the deposit of the micro-organism did not comply with the legal requirements. The requirements of Art. 83 EPC were therefore not fulfilled and the appeal was dismissed.
5. The relationship between Article 83 and Article 84 EPC
In case T 1691/11 claim 1 of all requests included the features of "at least two independent programmable motors" and "at least one of the transferring devices being coupled to each of the programmable motors". These features were clear and unambiguous. The clear linguistic structure of the claim did not allow for any different interpretation. Additionally, a discrepancy between the claims and the description was not a valid reason to ignore the clear linguistic structure of a claim and thus to interpret the claim differently. When the wording of a claim is perfectly clear, such as was presented here in claim 1, it needs to be considered under Art. 83 EPC, rather than undertaking another speculative interpretation of the claim. The opposition division's interpretation of these features required an exchange of the words "at least one" with "every", as well as "each" with "at least one". The meaning given to the feature by the opposition division was not based on the disclosure and could not be justified. The board concluded that the skilled person would not be capable of putting the invention into practice in view of the claimed relationship between transferring devices and motors. Hence, concerning the main request, the grounds for opposition under Art. 100(b) EPC 1973 prejudiced the maintenance of the patent as granted.
In T 1727/12 the opposition division distinguished between "classical insufficiency" and "Biogen sufficiency". Owing to the lack of "Biogen sufficiency", it concluded that claim 1 did not meet the requirements of Art. 83 EPC 1973. The board considered the issue of burden of proof in a case where the opposition division had to bear the burden of proof of its objections, as was the case here. Concerning "Biogen sufficiency", this concept is not commonly used in EPO proceedings. It has its origin in a decision handed down by the House of Lords in 1996 (Biogen Inc. v Medeva plc  UKHL 18), which concerned the patentability of a biotechnological invention and expressly referred to the jurisprudence of the boards of appeal. There was no need for the opposition division to invoke this concept. When using this concept it should have explained what exactly was meant, namely, that the extent of the monopoly claimed ought not to exceed the technical contribution to the art made by the invention, as described in the specification. The opposition division appeared to have considered that claim 1 could not be said to be sufficiently disclosed within the whole scope of the claim because the only invention disclosed in the specification corresponded to the combination of claims 1 and 3 to 5.
The board noted that the statement of decision T 409/91 cited in Biogen v. Medeva, referred to the requirements of Art. 84 EPC 1973 rather than to Art. 83 EPC 1973. Case T 409/91 was an ex parte case, which means that the argument based on the common purpose of Art. 83 and 84 EPC 1973 was unproblematic because an application can be refused for lack of compliance with each of Art. 83 and 84 EPC 1973. The present case, however, was an opposition appeal case, which meant that it was necessary to clearly distinguish the requirements of Art. 83 EPC 1973 (sufficiency of disclosure) and Art. 84 EPC 1973 (clarity and support in the description). Lack of clarity and lack of support are not grounds for opposition under Art. 100 EPC 1973 and cannot be transformed into such grounds by means of teleological considerations. It was, therefore, irrelevant to the present case whether claim 1 had sufficient support in the description; the only question to be raised under Art. 100(b) EPC 1973 was whether the opposed patent disclosed the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.
The board concluded that the opposition division, which bore the burden of proof, did not establish that claim 1 of the main request failed to comply with the requirements of Art. 100(b) EPC 1973. The case was remitted because the opposition division had issued a decision solely upon a particular issue and left substantive issues (Art. 54 and 56 EPC 1973) undecided.
1. Entitlement to priority – successor in title
In the catchword for T 577/11 the board set out the following:
For a claimed priority to be valid pursuant to Art. 87(1) EPC 1973, the applicant of a subsequent application claiming priority from an earlier application (priority application) who is not the person who filed the priority application must, when the subsequent application is filed, be that person's successor in title in respect of the priority application or of the right to claim priority. A succession in title that occurs after the filing date of the subsequent application is not sufficient to comply with the requirements of Art. 87(1) EPC 1973 (see point 6.5 of the Reasons).
Where the applicant of the priority application and the applicant of the subsequent application contractually agree that (only) economic ownership ("economische eigendom" under Dutch law) of the priority application and the right to claim its priority is to be transferred to the subsequent applicant, this is not sufficient to consider the latter a successor in title within the meaning of Art. 87(1) EPC 1973 (see point 6.6.2 of the Reasons).
2. Inventions relating to nucleotide and amino acid sequences
In accordance with Art. 87 EPC a European patent application is only entitled to priority in respect of "the same invention" as was disclosed in the previous application.
The patent in T 50/10 was entitled "Breast Cancer Resistance Protein (BCRP) and the DNA which encodes it". The appellant (opponent) disputed that the subject-matter of claim 1, namely the 655 amino acid polypeptide having the sequence of SEQ ID NO: 1, was the same as SEQ ID NO: 1 of the earlier application from which priority was claimed. The board noted that the priority application did not contain a discrete sequence identical to SEQ ID NO: 1 of the patent. However, in Example 6 there was a disclosure of a "cDNA insert ... 2418 bp in length as in Figure 2C or SEQ ID NO: 2 [with] a long ORF that began at position 239 and ended with the stop codon TAA at position 2204-06". Translation of this ORF yielded a protein of 655 amino acids which was identical to SEQ ID NO: 1 as mentioned in the patent, it being part of the basic technical knowledge of the skilled person that translation of a nucleic acid sequence into the corresponding amino acid leads to a defined amino acid sequence. Furthermore, the translated amino acid sequence of this region was included in the longer sequence shown in Figure 2A of the priority application. Thus, the board was satisfied that, given the information about the positions of the start and stop codons of the ORF concerned, the skilled person could derive the polypeptide having SEQ ID NO: 1 as claimed, directly and unambiguously, using common general knowledge, from the priority application as a whole.
3. Partial priority
In G 1/15 (OJ 2017, ***) the Enlarged Board of Appeal answered the questions referred to it as follows:
"Under the EPC, entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of one or more generic expressions or otherwise (generic "OR"-claim) provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect."
The Enlarged Board referred to its previous statement on generic "OR"-claims in G 2/98, point 6.7 of the Reasons: "... The use of a generic term or formula in a claim for which multiple priorities are claimed in accordance with Article 88(2) EPC, second sentence, is perfectly acceptable under Articles 87(1) and 88(3) EPC, provided that it gives rise to the claiming of a limited number of clearly defined alternative subject matters" (emphasis added by the Enlarged Board in the present decision). It noted that a divergence had emerged in the case law on the basis of the above proviso. In a number of decisions those words had been understood as a further test to be complied with for a claim to partial priority to be accepted.
The Enlarged Board set out its interpretation of the relevant provisions for partial and multiple priorities, Art. 88(2) and (3) EPC. If a claim in the later application was broader than an element disclosed in the priority document, then priority could be claimed for such element. It did not matter whether partial priority was claimed for one element in one priority document only, for a plurality of elements disclosed in one priority document (first situation addressed in Art. 88(3) EPC), for a plurality of elements disclosed in more than one priority document (second situation addressed in Art. 88(3) EPC) or for a plurality of elements disclosed in a plurality of priority documents (situation addressed in Art. 88(2), second sentence, EPC). It was also of no relevance whether one claim encompassed only one element disclosed in a priority document or a plurality of elements disclosed in one or more priority documents. The Enlarged Board considered this interpretation to be confirmed by FICPI Memorandum C (M/48/I) of the travaux préparatoires to the EPC 1973, which could be said to express its intent (G 2/98, point 6.4 of the Reasons; see also Minutes of the Munich Diplomatic Conference of 1973, M/PR/I, "Article 86 (88) Claiming Priority", points 308 to 317), and by the Paris Convention. Thus, the EPC did not contain other requirements for recognising the right of priority beyond the same invention, whether for simple, multiple or partial priority, the last being regarded as a sub-group of multiple priorities. As a consequence, the proviso of G 2/98 could not be construed as implying a further limitation of the right of priority.
In assessing whether a subject-matter within a generic "OR" claim could enjoy partial priority, the first step was to determine the subject-matter disclosed in the priority document that was relevant, i.e. relevant in respect of prior art disclosed in the priority interval. This was to be done in accordance with the disclosure test laid down in the conclusion of G 2/98 and on the basis of explanations put forward by the applicant or patent proprietor to support his claim to priority, in order to show what the skilled person would have been able to derive from the priority document. The next step was to examine whether this subject-matter was encompassed by the claim of the application or patent claiming said priority. If the answer was yes, the claim was de facto conceptually divided into two parts, the first corresponding to the invention disclosed directly and unambiguously in the priority document, the second being the remaining part of the subsequent generic "OR"-claim not enjoying this priority but itself giving rise to a right to priority, as laid down in Art. 88(3) EPC. This also corresponded to the scheme described in the Memorandum.
The task of determining the relevant disclosure of the priority document taken as a whole, and whether that subject-matter was encompassed by the claim in the subsequent application, was common practice in the EPO and among practitioners of the European patent system and as such should not pose any additional difficulty. Nor did it create uncertainty for third parties. The decisions reached in T 665/00, T 135/01, T 571/10 and T 1222/11 showed that it could be carried out without any need for additional tests or steps.
1. Article 123(2) EPC – added subject-matter
1.1 Gold standard
In T 1363/12 the appellant relied on a section in the Guidelines (H-IV, 2.3) to argue that a more lenient standard than the "gold standard" summarised in G 2/10 should be applied. The section in the Guidelines appeared to have been taken from T 2619/11 where the board had taken the view that the focus of the first-instance decision was disproportionately directed to the structure of the claims as filed to the detriment of what was really disclosed to the skilled person by the documents as filed; the application was directed to a technical audience rather than to a philologist or logician, for which audience an attempt to derive information from the structure of dependent claims would lead to an artificial result. The board in T 1363/12 considered that T 2619/11 did not lay down a new test (namely, of what was "really disclosed" to the skilled person) different from the "gold standard" (see also T 938/11).
1.2 No artificial and semantic construction
In T 99/13 the disputed point was whether the specification of the temperature for the viscosity condition ("at 25°C") was directly and unambiguously derivable from the application as filed. The board recalled, in line with the case law (see e.g. T 667/08, T 1269/06), that the assessment of the requirements of Art. 123(2) EPC should be done on the same basis as for all other patentability issues (e.g. novelty and inventive step), namely from the standpoint of the skilled person on a technical and reasonable basis avoiding artificial and semantic constructions. The skilled person, reading claim 1 as originally filed from the standpoint of a technician working in the field, would read the broad condition expressed therein with regard to the viscosity measurement, as a condition to be met at the temperature of use of the claimed formulation and would turn to the description to find further information in this respect. The description specified that the preferred temperature of reconstitution was 25°C and the viscosity measurement was accomplished at 25°C in all examples but one. The only example specifying a different temperature did not fall under claim 1. The board concluded that the amended viscosity condition with the specification of the temperature of measurement "at 25°C" was directly and unambiguously derivable from the application as filed.
1.3 Amendment and clarity – inescapable trap
In T 81/13 the board refused claim 1 of the main request as it contained a viscosity feature which the board considered not clear (Art. 84 EPC). In claim 1 of the auxiliary request the appellant deleted this viscosity feature and argued that an unclear and unmeasurable viscosity value was not essential and could be omitted for this reason from the claim; this omission should also be possible to escape the Art. 84/123(2) EPC "squeeze", which would lead to an "inescapable trap". The board observed that the dentifrice composition was not disclosed in the description or in the claims as originally field in isolation from its viscosity requirements. It considered that it was the choice of the appellant to define an essential characteristic of the invention by a parameter. This parameter was revealed to be unclear but remained an essential feature since, even if unclear, it conferred on the composition a particular aspect and reflected a composition having specific and essential properties. Also, the presence of an unclear essential feature in a claim did not inevitably lead to an "inescapable trap". If the omission of such feature reflecting essential properties of a claimed product was not possible, its replacement by an equivalent feature providing inevitably the same essential property could be considered as normally feasible. This was usually possible through the incorporation of adequate technical features able to provide inevitably said property. As a last resort, the claimed subject-matter could even have taken the form of an exemplified subject-matter.
1.4.1 Applicability of the gold standard set out in G 2/10 to undisclosed disclaimers
In T 437/14 (OJ 2017, ***) the board referred the question of the allowability of undisclosed disclaimers to the Enlarged Board of Appeal, and in particular the applicability of G 2/10 to these disclaimers. The board observed that in G 1/03 and G 2/03 the Enlarged Board considered undisclosed disclaimers to be allowable under Art. 123(2) EPC under specific circumstances. In G 2/10 the Enlarged Board of Appeal established the standard to be applied for disclosed disclaimers. Thus, at first glance, G 2/10 did not apply to undisclosed disclaimers. After reviewing the findings made in G 2/10, the board concluded that there was only one standard, namely the gold standard, for assessing any amendment, including undisclosed disclaimers, for compliance with Art. 123(2) EPC. This conclusion left no room for the exceptions defined in G 1/03, because also for undisclosed disclaimers the only relevant test would be the gold standard. Only if this standard was met would the disclaimer be allowable under Art. 123(2) EPC. However, even after extensively discussing G 1/03 and implying the relevance of the gold standard to undisclosed disclaimers, the Enlarged Board in G 2/10 did not set aside G 1/03 with regard to the exceptions relating to undisclosed disclaimers defined in that decision.
The board observed that if the gold standard of G 2/10 were to be applied to claims containing undisclosed disclaimers, then an undisclosed disclaimer would in most cases not be allowable under Art. 123(2) EPC. A disclaimer excluding undisclosed subject-matter almost by definition contravened Art. 123(2) EPC. If a whole is reduced by an undisclosed first part, the board could not see how the remaining second part could ever be regarded as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed.
The board noted that the case law after G 2/10 was not uniform as regards whether the gold standard was to be applied and, if so, what standard exactly needed to be applied for the allowability of undisclosed disclaimers under Art. 123(2) EPC. The boards in numerous decisions had applied a somewhat modified gold standard (e.g. T 1870/08, T 2018/08), which was due to the fact that the boards in these decisions tried to find a way to accommodate the gold standard apparently required by G 2/10 without running counter to the ratio decidendi of G 1/03.
The following fundamental questions of law were referred to the Enlarged Board of Appeal:
1. Is the standard referred to in G 2/10 for the allowability of disclosed disclaimers under Art. 123(2) EPC, i.e. whether the skilled person would, using common general knowledge, regard the subject-matter remaining in the claim after the introduction of the disclaimer as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed, also to be applied to claims containing undisclosed disclaimers?
2. If the answer to the first question is yes, is G 1/03 set aside as regards the exceptions relating to undisclosed disclaimers defined in its answer 2.1?
3. If the answer to the second question is no, i.e. if the exceptions relating to undisclosed disclaimers defined in answer 2.1 of G 1/03 apply in addition to the standard referred to in G 2/10, may this standard be modified in view of these exceptions?
1.4.2 Drafting of disclaimers – clarity
(CLB, II.E.1.5.3 d))
In T 2130/11 the board held that the difficulty in formulating an allowable disclaimer could not justify an exception to the application of Art. 84 EPC which was not foreseen in the EPC. The requirements of Art. 84 EPC must therefore apply for a disclaimer as for any other feature of a patent claim. However, the condition that the disclaimer should not remove more than is necessary to restore novelty (G 1/03) should be applied while taking into consideration its purpose, namely that the "necessity for a disclaimer is not an opportunity for the applicant to reshape his claims arbitrarily" (G 1/03). In this respect situations could be foreseen, in which, while fulfilment of the condition taken in a strictly literal way would not be possible, a definition of the disclaimed subject-matter, which satisfied the requirements of Art. 84 EPC and fulfilled the purpose of the condition (i.e. to avoid an arbitrary reshaping of the claims), might be achievable. In other words, a disclaimer removing more than was strictly necessary to restore novelty would not contradict the spirit of G 1/03, if it were required to satisfy Art. 84 EPC and it did not lead to an arbitrary reshaping of the claims.
1.4.3 Availability of remaining subject matter at filing or priority date
In T 1808/13 the board endorsed its approach in T 1441/13, which had been to establish whether the subject-matter of the invention remaining in the claim was available at the filing date. In T 1808/13 the appellant took the view that obtaining embryonic stem (ES) cells from human parthenotes was implicitly known to the skilled person as part of his common general knowledge. The board ruled that the patent application did not disclose directly and unambiguously for the skilled person, even drawing on his common general knowledge, that ES cell lines could be derived from human parthenotes. The skilled person was not able at the filing date to establish or use human ES cell lines from parthenotes.
1.5 Ranges - qualifiers "below" and "about"
In T 1990/10 the board had to decide whether the application as filed provided a basis for the temperature range "below 35°C" in claim 1. The application as filed disclosed various temperatures, both specific temperature values ("30°C") and temperature ranges, such as open-ended ranges ("below 37°C") and closed ranges with defined upper and lower-end values ("30°C to 35°C"). The board considered that the term "below" was explicitly disclosed only for defining the broadest mentioned temperature range, namely "below 37°C". The board held that "below 35°C" was also not implicitly derivable from the broadest open-ended range "below 37°C" in combination with the upper-end value of the closed range "30°C to 35°C". Applying the criteria of T 2/81, the combination of the lower-end and the upper-end values of the closed range with the broadest temperature range would result in the temperature ranges "30°C to below 37°C" and "35°C to below 37°C", not however in the open-ended temperature range "below 35°C". In addition, the closed temperature range "30°C to 35°C" included the specific temperature "35°C", whereas the open-ended range "below 35°C" in claim 1 explicitly excluded this value. It was also not a combination of ranges and sub-ranges as explained in T 2/81 to merely transfer the term "below" in "below 37°C" to the upper end value of "30°C to 35°C". In the absence of any indication in the application as filed to do so, this transfer of the term "below" to another temperature value or temperature range had no basis in the application as filed. The board also had to decide whether the application as filed provided a basis for the temperature range "about 26°C to 32°C" in claim 4, which defined the cultivation temperature for propagating a Chordopoxvirus in specific infected host cells, i.e. chicken embryo fibroblasts (CEF). The board observed that the term "about" was only present in the general context (not specifically concerning CEF) and, when present in a temperature range, the term was present in both upper-end and lower- end values of the range. In order to arrive at the temperature range "about 26°C to 32°C", it was necessary to combine the lower-end value of the range "about 26°C to about 36°C" in original claim 2 with the upper-end of either "between 28°C and 32°C" or "30°C to 32°C" described in the application as filed. While these last two ranges were found in the specific context of CEF cells as host cells, the former range was found in the context of the broadest disclosure of the application as filed which did not refer to specific host cells.
1.6 Deletion of essential feature
In T 1515/11 the board observed that a feature could not be deleted from an independent claim if it had been consistently presented as an essential feature of the invention, since this would add subject-matter. In some cases there might be room for debate whether the application presents a feature as being essential to the invention or as being optional. However, there were also cases where, on purely formal grounds, the essentiality of a feature could not be doubted. One such case was where the applicant chose to include in an independent claim as filed a feature explicitly mentioning the problem, and affirming that the claimed subject-matter represents a solution to the problem. In particular, where a claim to a method included a feature explicitly defining that the method was carried out in a manner which solved the problem, to argue that this feature was not essential would be tantamount to arguing that in order to solve the problem, it was not essential to carry out the method in a way which solved the problem.
2. Article 123(3) EPC – extension of the protection conferred
2.1 Narrowing down a generic class or list of chemical compounds (open claims – "comprising")
T 1360/11 concerned a case where a granted claim, directed to a composition defined in an open manner, typically by means of the term "comprising", and including the presence of a component belonging to a class or list of compounds in a quantity defined by a range, was later amended by limiting the definition of the class or list of compounds. In such a case, in spite of the apparent limitation due to the explicit or implicit deletion of some members of the class or list of compounds, the wording of the granted and amended claims might be such that the deleted compounds were required to be present in an amount within a defined range according to the granted claim, while they might still be present, but with no limitation in quantity, according to the amended claim, therefore resulting in an extension of the protection conferred contrary to the requirements of Art. 123(3) EPC. The problem was well known in the case law, see e.g. T 172/07, T 2017/07, T 832/08, T 1312/08, T 869/10, T 287/11. The board observed that by means of inserting a double condition the claim may not extend the protection conferred by the patent. Where, as in the case at issue, a granted claim directed to a composition defined in an open manner and including the presence of a component belonging to a class or list of compounds in a quantity defined by a range was later amended by limiting the definition of the class or list of compounds, a possible infringement of the requirements of Art. 123(3) EPC might be avoided by including in the amended claim a quantitative condition on the limited class or list of compounds and an additional constraint on the total amount of compounds belonging to the broader class or list.
2.2 Replacement of drawings
In T 236/12 the drawings published in the patent specification had been replaced by those originally filed. Although the published drawings had disclosed technical information not derivable from those originals, their replacement did not broaden the scope of the patent. The technical features of the claims were explained in sufficient detail in the description, as read together with the originals, so the skilled person could still get a clear idea of the protected subject-matter and how it should look.
2.3 Inescapable trap – not Article 123(2)- (3) EPC trap – lack of novelty due to loss of priority
In T 1983/14 the applicant had added a limiting feature to the claim during examination. The opposition division found that, as a consequence of adding this feature, the patent proprietor had lost its right to priority and its own use of the invention during the priority period had been prejudicial to novelty. The board agreed and held in addition that the problem of the added feature could not have been overcome by amendment. This was because Art. 123(3) EPC prevented the removal, after grant, of a problematic, limiting feature. The problem described in G 1/93 was a violation of Art. 123(2) EPC. In the case at issue, it was lack of novelty due to loss of priority.
2.4 Change from a claim in Swiss-type form to a claim under the provisions of Article 54(5) EPC
In T 1673/11 claim 1 of the main request was drafted in the format of a purpose-limited product claim as provided for by Art. 54(5) EPC, whereas all claims as granted had been in the so-called "Swiss-type" form. The board held that it followed from decision G 2/88 that it was generally accepted as a principle underlying the EPC that a claim to a particular physical activity (e.g. method, process, use) conferred less protection than a claim to the physical entity per se. As a consequence, a purpose-limited process claim conferred less protection than a purpose-limited product claim (T 1780/12, albeit in the context of double patenting; followed by decision T 879/12; see also T 250/05). The respondent disagreed with the principle that a process claim was inherently narrower than a product claim. For the respondent, the protection conferred by both types of claims was the same. The board disagreed. In the case in hand, the purpose-limited product claim conferred protection on the product, whenever it was being used for the treatment of infantile Pompe's disease. Since the claim does not refer to a step of manufacture of a medicament, the product claimed was not limited to a manufactured medicament, packaged and/or with instructions for use in the treatment of infantile Pompe's disease. Even if by virtue of Art. 64(2) EPC the protection conferred by granted claim 1 extended to the product directly obtained by the manufacturing process referred to in said claim, the protection conferred by claim 1 of the main request was broader. Nor could the board follow the appellant's argument that since the use limitation of the claims of the main request and of the granted claims was the same, their scope of protection was identical. For example, once the patent was amended, a medicament containing the product, packaged and provided with instructions for the use in a treatment other than that of infantile Pompe's disease was encompassed by the scope of claim 1 of the main request when said medicament was being used for the treatment of infantile Pompe's disease. The protection conferred by granted claim 1 did not encompass such use. The board concluded that the amendment of the contested patent in such a way extended the protection it conferred, contrary to Art. 123(3) EPC.
F. Divisional applications – requirement of pending earlier application
In J 23/13 the applicant had filed the divisional application after the filing of the notice of appeal against the decision refusing the parent application, but before the time limit for filing the statement of grounds of appeal had expired; since no statement of grounds was filed, the board rejected the appeal against the refusal of the parent application as inadmissible. The board observed that the divisional application had been filed while the time limit for filing the grounds of appeal was still running. The fact that the appeal was later rejected as inadmissible could not change the fact that, on the date when the divisional was filed, substantive rights were still in existence.
In J 22/13 the applicant had filed the divisional application, in contrast to the situation in J 23/13, after expiry of the time limit for filing the statement of grounds of appeal. The application could thus not be treated as a divisional application.
III. RULES COMMON TO ALL PROCEEDINGS BEFORE THE EPO
A. Legitimate expectations
In T 595/11 the appellant had enclosed a debit order for a reduced appeal fee with the notice of appeal. The board held that the time frame within which the payment of the fee needed to be checked by the EPO and the party be warned was shorter than the four years that had passed in the present case between the expiry of the time limit for filing the appeal and the time when the Office first made the appellant aware of this issue. The legitimate expectations of the appellant that the fee payment was in good order and would not be objected to were indeed established. After weighing up the legitimate interests of all the parties the board concluded that the original error might have had serious and inequitable consequences through the Office's failure to discover it. Therefore, it was equitable that the Office' failure was made good and the error was now allowed to be remedied, as far as possible. Seeing that some adverse effect was inevitable, the board considered that the possibility of a real, but otherwise in itself not necessarily decisive setback for a party (here the non-occurrence of an immediate success) was more preferable than a certain decisive loss of all rights for another party, in particular given the fact that for a long time none of the parties had expected the latter (see also T 1037/11).
In T 105/11 the applicant had requested that the decision of the examining division dated 30 June 2010 be corrected. On 6 September 2010, the examining division re-issued the written decision, in corrected form, with a new date. The board established that the date of the notification of the decision refusing the application remained the date of notification of the first written decision. Whilst the notice of appeal was received in time, the statement of grounds of appeal was not.
The board noted that in several cases involving the issuing of a "second decision" by the department of first instance, the boards of appeal have held that an appeal which in principle would have to be rejected as inadmissible should, in the circumstances of those cases, nevertheless be found admissible in view of the principle of the protection of legitimate expectations. In contrast to the cases referred to, the appellant had explicitly requested that the written decision be corrected. The professionally represented appellant should have been aware that the second decision intended to correct the first written decision under R. 140 EPC. Also, in the case before the board there had been no explicit statement, as had been in other cases, to the effect that the first decision was to be ignored.
Nevertheless, it was still imputable to the EPO that the second written decision was not correctly and unambiguously identified as a correction decision in the first place and that this explained why the appellant directed the notice of appeal and the statement of grounds of appeal against the "Decision of September 6, 2010" and filed them within two and four months, respectively, from that decision's date of notification. The board held, in application of the principle of the protection of legitimate expectations, that the statement of grounds of appeal was deemed to have been filed in time.
In T 1785/15, the appellant had, upon a first enquiry with the examiner, received erroneous information regarding the possibility of correction. Though this error was subsequently corrected by the formalities officer, in a telephone conversation of 24 July 2015, the appellant had been led to believe that an appeal against the decision to grant would be possible: "[he] pointed out the option of filing an Appeal against the decision to grant". The board interpreted this as an information that it was possible to file an appeal, not unlike the notice contained in most formal decisions of the EPO that are open to appeal. The applicant filed its appeal three days later. The board held the appeal inadmissible.
The board referred to decision G 1/10, which makes clear that there are in effect no remedies against errors in the approved text of a patent application once the decision to grant has been issued. Suggesting a legal remedy where there is none was at best misleading, and the small interval between the advice and the filing of an appeal suggested that the applicant may very well have relied upon such advice when filing the appeal. The board likened the current case to decision T 308/05 and found it equitable to order a reimbursement of the appeal fee as it could not be ruled out, and was in fact likely, that the applicant filed the appeal based on incorrect advice from the Office. The applicant thereby had at least a legitimate expectation that the appeal would be found admissible and examined as to its substance.
B. Right to be heard
In T 2238/11 the appellant argued that the examining division had surprisingly concluded in the "Further Remarks" section in the decision under appeal that the claimed subject-matter lacked novelty and that, since it had not been heard on this aspect, its right to be heard pursuant to Art. 113(1) EPC had been violated.
However, the decision under appeal had been based on lack of inventive step, not on lack of novelty. The inventive-step objection had been raised during the examination proceedings and the appellant had not argued that an opportunity to comment on this objection had been denied. The board held that a party's right to be heard was satisfied if it had an opportunity to present its comments on all grounds or evidence on which a decision was based, and was not violated if it did not have the opportunity to comment on observations in an obiter dictum (T 726/10, point 9 of the Reasons, and T 725/05, point 6 of the Reasons). Indications that the "Further Remarks" section in the decision under appeal did not form part of the actual decision were (i) that the decision to refuse the application had been taken during the oral proceedings and had been based on lack of inventive step; (ii) that this section followed the examining division's statement that the application was to be refused; and (iii) that the section started with the words "Post-proceedings analysis ...".
In T 738/13, the appellant's right to be heard (Art. 113(1) EPC) had been breached in that the examining division had not addressed its arguments on inventive step in the reasons for its decision. This would normally have meant immediate remittal of the case to the examining division.
The board, however, considered that, prima facie, the claims as filed lacked clarity (Art. 84 EPC). Immediate remittal would have resulted in the case coming back to the board, this time presumably with a decision which was fully reasoned on inventive step but still did not address the lack of clarity. The board therefore decided to deal with clarity straight away. The appellant amended the claims and so overcame the board's objection under Art. 84 EPC.
The board refrained from examining novelty and inventive step because that would have meant assessing the appellant's disregarded arguments for the first time on appeal, in the absence of any decision of the examining division on the matter. It therefore remitted the case to the examining division for further prosecution (Art. 111(1) EPC).
In T 1691/15 (OJ 2017, A15) the appellant (opponent) had, during the opposition proceedings, made complaints which had been dealt with by the EPO's "Directorate Quality Support" (DQS). Such complaints and DQS's replies are by default kept in the non-public part of the file, based on the Decision of the President of the EPO, OJ SE 3/2007, J.3, Art. 1(2)(b), which states that documents "may, exceptionally, be excluded from file inspection by the Office of its own motion if their inspection would be prima facie prejudicial to the legitimate personal or economic interests of natural or legal persons other than a party or his representative" (Art. 128(4) and R. 144(d) EPC).
R. 79(1) EPC requires that the EPO communicate a notice of opposition to the patent proprietor. R. 79(2) EPC states that if there is more than one opponent, the other opponents will receive a copy of the others' opposition. R. 79(3) EPC requires that the EPO send any observations and amendments filed by the patent proprietor to the other parties, and R. 81(2) EPC requires that the EPO send any communication under Art. 101(1) EPC and any reply thereto to all parties. The principle established by the above is that in opposition proceedings, which are inter partes proceedings, all exchanges have to be notified to all parties. This is also acknowledged in the Notice of the EPO dated 3 June 2009, OJ 2009, 434.
In order to comply with this principle, the entire exchange between the opponent and the EPO in the complaint procedure – which clearly related to file-specific issues – should have been sent promptly to the patent proprietor. None of the complaints could be regarded as prima facie prejudicial to the legitimate personal or economic interests of a natural or legal person. There was therefore no need to exclude them from the public file. Such exclusion should in any case be exceptional, not by default. For these reasons, the board decided to provide the respondent with the complete correspondence by way of a communication, which became part of the public file.
C. Oral proceedings
1. Request for oral proceedings – further oral proceedings before the same department
According to Art. 116(1), second sentence, EPC the EPO may reject a request for further oral proceedings before the same department where the parties and the subject of the proceedings are the same. In T 1548/11 the board observed that during the oral proceedings held before the opposition division before issuing the first decision only the question of novelty had been discussed. Since the opposition division found the contested claim to lack novelty, it revoked the patent without touching upon the issue of inventive step during the oral proceedings. By contrast, the decision now under appeal dealt exclusively with the question of inventive step. Its subject was therefore not the same as the subject of the oral proceedings held before the first decision was taken. The board also held that the appellant was not legally required to re-state a request for oral proceedings after remittal, despite the explicit invitation by the opposition division to the parties to submit their respective requests. In particular, the fact that the request for oral proceedings was not repeated could not be interpreted as a withdrawal of the request, since a party's request for oral proceedings could be withdrawn only by virtue of a clearly expressed intention not to proceed with the request, for example in the form of an unambiguous written statement to that effect.
2. Changing the date of oral proceedings
In T 1246/10 the board accepted a first postponement of the oral proceedings in view of the exacerbation of the appellant's serious illness and the fact that the respondent did not object to a postponement. However, the board refused the second request to postpone oral proceedings filed less than one month before the scheduled date. The respondent had already made travel arrangements for the oral proceedings and opposed any postponement thereof. Furthermore, the board had no indication that a further postponement for a few months could change the appellant's personal health situation. The appellant should have appointed a representative if he could not attend the oral proceedings himself.
In T 861/12 the opponent had appointed a total of six professional representatives to act for it. It then asked the board to postpone oral proceedings because its representative had other oral proceedings on the same day. The board noted that although the opponent had shown why that particular representative was not available, it had not adequately explained why none of the five others it had chosen to appoint could replace him. The opponent then revoked its authorisation, and submitted a new one in which only the unavailable representative was authorised. The board held that this conduct violated the principle of good faith. To withdraw the authorisation of five of the six representatives originally authorised, despite being unable to show a legitimate interest in doing so and knowing full well that the remaining professional representative could not attend oral proceedings on the date scheduled, was a breach of its duty to handle proceedings in good faith. The opponent should not be able to benefit from its conduct (nemo auditur propriam turpitudinem allegans; T 1705/07, T 23/10, T 1125/10, T 736/14), which was a belated attempt to avoid having to replace the representative who was unavailable.
3. Purpose of communication under Article 15(1) RPBA
In T 1459/11 the board held that the purpose of the communication under Art. 15(1) RPBA was to establish the framework of the oral proceedings. The communication did not – explicitly or implicitly – represent an invitation or opportunity to file further written submissions or to shift the focus of the case to be heard at oral proceedings. The terms of the appeal were rather determined by the statement of grounds of the appeal and the reply thereto (Art. 12(2) RPBA). Consequently there was no legal basis in either the EPC or the RPBA for the filing of a "response" to a communication pursuant to Art. 15(1) RPBA. A board is under no obligation to take such a "response" into account. Any submissions – whether arguments or requests – contained in such a "response" that went beyond those contained in the statement of grounds of appeal or the reply thereto might constitute an amendment to the case presented, and it was a matter for the discretion of the board whether such submissions were to be taken into account (Art. 13(1) RPBA).
4. Oral proceedings conducted by video conference
In T 2068/14 the board held that it had discretion regarding the organisation of oral proceedings, including, in principle, holding them by video conference. This discretion was exercised according to the circumstances in any given case, including, in particular, whether the case at hand was ex parte or inter partes. A further important issue was the availability, in principle and in a specific case, of suitable rooms for oral proceedings before the board by video conference. This would typically require that provision also be made for the public (see T 1266/07). While a video conference did not allow such direct communication as the face-to-face meeting involved in conventional oral proceedings, it nevertheless contained the essence of oral proceedings, namely that the board and the parties/representatives could communicate with each other simultaneously. Thus each party's case could be presented to the board in real time, and the board could put questions to the parties/representatives. The onus was on the appellant to persuade the board that conventional oral proceedings were not appropriate to properly present the appellant's case and that the board should exercise its discretion to, exceptionally, explore the possibility of holding oral proceedings by video conference. In the case at issue, the board rejected the request.
5. Handwritten amendments during oral proceedings before the board
The reasons given in the EPO notice of 8 November 2013 on handwritten amendments for changing a practice that had been applied for years at first instance do not warrant changing the established practice of the boards of appeal and the related case law (T 37/12, citing T 1635/10, point 5 of the Reasons).
D. Time limits, further processing and interruption of proceedings
In T 854/12 the board found that the proceedings had not been interrupted under R. 142 EPC.
It first of all observed that it was for the boards to consider of their own motion whether proceedings had been interrupted under R. 142 EPC. Any subsequent decision that they had been interrupted, and to enter this in the register, had only declaratory effect and was not constitutive.
In the case at issue, however, there had been no grounds for an interruption, because transferring a patent to a person whose property had gone into administration and been placed under the control of an insolvency practitioner as administrator some time ago did not result in any temporary procedural incapacity, which, as was clear from the rationale underlying R. 142 EPC, was the logical prerequisite for an interruption. The board distinguished this scenario from one in which the applicant or proprietor had only just become insolvent. Here, the mechanism of interruption and resumption laid down in R. 142(1)(b) and R. 142(2) EPC made sense, as the Office first had to become aware of the administrator's appointment, while the administrator himself needed time to familiarise himself with the case before he could take any meaningful decisions about what to do with the assets in administration.
So R. 142(1)(b) EPC is applicable where a proprietor initially unrestricted in his procedural conduct was later "prevented from continuing the proceedings", but not where a patent was transferred with the administrator's consent to another proprietor who was already insolvent and therefore did not become a party to the proceedings but was instead represented from the outset by the administrator, whose powers of disposal were unlimited.
The board also held that it did not have to await a decision of the Legal Division on interruption of the proceedings. Rather, in making its decision, a board had to ascertain for itself whether, based on the facts submitted and any additional facts it had to investigate of its own motion, the conditions for an interruption were met, if its decision depended on this point (see also Chapter IV.D.1 "Board competent to hear a case").
E. Re-establishment of rights – merits of request
In T 1101/14 the board considered that the signing of documents was an act that required particular care on the representative's part, especially when the signature related to the last legal remedy against an adverse decision. A representative who had mistakenly signed a statement of grounds of appeal having most of its pages missing had, in the absence of special circumstances which could justify the representative's mistake, to be considered not to have taken all due care required by the circumstances.
In T 1022/14 the board observed that abandonment of an application was a final action with serious consequences if misapplied. Thus for a decision to close a file and to abandon an application the utmost care had to be taken to establish whether the client had without any doubt issued instructions to that effect. The decision to abandon an application had to be taken by the representative himself, on the basis of his own observations and knowledge. This responsibility could not be delegated to employees, as decisions of this kind required the special knowledge of the representative for which he had to assume personal responsibility as a professional.
In T 942/12 the board held that if a European representative was expressly instructed that he was not required to monitor the payment of renewal fees, the duty of due care did not involve that he nevertheless monitored the payment. It could not be expected that the European representative monitors renewal fee payments at his own expense.
In J 15/14 the board held that in a proper workflow between two representative's offices where one had the function to give instructions to the other, a confirmation from the other representative that a particular instruction had been received and followed was required; if no confirmation was received a follow-up e-mail should be sent in order to safeguard the rights of the client.
In J 7/15 the board could not determine with any degree of certitude what caused the non-payment of the renewal fee. The applicant had used the services of an external company for paying the renewal fees, a system which had worked flawlessly for more than 15 years, but failed in the case at hand. In the circumstances the board followed the reasoning of T 529/09 and gave the benefit of the doubt to the appellant, granting the request for re-establishment of rights.
F. Law of evidence
1. Witness testimonies and expert opinions
In T 2054/11 the appellant (opponent), at the very late stage of oral proceedings before the opposition division, had submitted a statutory declaration from a witness to confirm the circumstances of a presentation's public disclosure. Yet at no point during opposition had it called that witness or asked for him to be heard; although it had written in a late-filed submission that it "would also be happy to appoint … as a witness", the board held that that could not be considered a definite witness appointment. Moreover, it had not stated on what the witness was to be heard. The board thus found that the opposition division's decision not to hear the witness had not been a procedural violation because, contrary to the appellant's opinion, the witness could not have retrospectively added previously omitted facts when heard: witnesses could only corroborate facts already alleged, i.e. confirm their truth, but not submit new facts on an opponent's behalf to fill in gaps in the substantiation of alleged prior use. Summing up, the board saw no reason to admit under Art. 12(4) and 13(1) RPBA the taking of evidence (be it before the opposition division or in the appeal proceedings) from the – in the end – two witnesses offered in a late-filed submission and so the request that the board hear those witnesses on the alleged prior use or that the department of first instance hear them after remittal of the case had to be dismissed as insufficiently substantiated, and so prima facie irrelevant, and as unjustifiably late.
2. Taking of evidence – right to be heard
In T 2294/12 one of the appellants' objections was that the proceedings before the examining division had been fundamentally flawed because the two sets of comparative tests that they had submitted during the written phase had been disregarded. The board noted that the decision under appeal gave no reason why the division had found the first set irrelevant and did not even mention the second, which had been submitted in response to the division's objections of a lack of novelty over a document D3. And yet those tests had aimed to prove that the subject-matter of claim 1 of the main request – on which the contested decision was based – differed from D3. It was well established in the boards' case law that the right to be heard also guaranteed the right to have relevant grounds that might influence the outcome taken into account in the written decision; moreover parties had the right both to give evidence in an appropriate form and to have it heard (T 1110/03, point 2.4 of the Reasons) unless that evidence had been expressly excluded. Therefore the examining division had denied the appellants their right to be heard under Art. 113(1) EPC 1973, which was a fundamental procedural violation. However, in this instance the board did not consider it appropriate to remit the case to the department of first instance without first examining its merits.
In T 1363/14 the opposition division had refused to hear two witnesses on the ground that the opponent's allegation of public prior use had been insufficiently substantiated. The board disagreed, holding that the notice of opposition had provided the facts relevant for assessing the allegation in detail, and the additionally submitted evidence plausibly supported its assertion that the prior use had occurred; precisely because the opponent had substantiated its submission that the subject-matter of the prior use had embodied all the patent's features, the division should have heard the witnesses to take the supporting evidence offered. It had found that the prior use allegation had been insufficiently substantiated because the witnesses would be unable to provide that evidence. But the board pointed out that no EPC provision required that the facts adduced in support of alleged prior use actually be proven within the opposition period in order to substantiate the allegation; rather the requirement was for opponents to submit all the relevant facts and, should the other party dispute them, as a precaution offer suitable evidence, to include – under Art. 117(1) EPC – documents, objects for inspection and witnesses. What was not allowed was, instead of submitting specific facts, merely stating that witnesses would be able to give more details on the circumstances of the prior use; the opponent would not then meet its duty to make a complete case and its offer of evidence would be akin to a request to establish the evidence since it would not be submitting the relevant facts itself, to be corroborated by the witnesses, rather it would be the witnesses who would be introducing the facts into the proceedings. In other words, it was in the nature of offering witnesses to state that they would corroborate the facts (already) alleged. It was not permitted to speculate about what a witness would be able to remember and what not, thereby pre-empting the evidence's evaluation. The principle of unfettered consideration of the evidence did not apply until after it had been taken and could not be used to justify not taking evidence offered: if the facts submitted were complete and free of contradiction, the supporting evidence offered had to be taken, and only afterwards could it be evaluated.
Thus the opposition division's refusal to summon the witnesses had arbitrarily ruled out the possibility that they would be able to corroborate the opponent's allegations. Pre-empting the evidence's evaluation in this manner had been unjustified. If the facts submitted and for which evidence was offered would support a prior use allegation (that was relevant for the decision) if corroborated, then the evidence offered had to be taken. Since it could not be ruled out that, had the opposition division admitted the evidence, it would have decided differently, the board set aside the division's decision, remitting the case to it for further prosecution of the opposition.
3. Probative value of evidence on a case-by-case basis
3.1 Witness testimony and written statements
In T 2565/11 the invention concerned a method of operating a ventilator and air conditioner for vehicles. It was not contested that the trains which were the subject of a prior use allegation were indeed delivered to DB Regio AG and operated in a public manner. However, it was disputed that information concerning the ventilation and air conditioning system of those trains was published in the sense of Art. 54 EPC by the delivery and operation of the trains and further that the structure and operation of the ventilation and air conditioning system had been adequately proved by the opponent. In its decision the opposition division held that the alleged public prior use had not been proven beyond reasonable doubt and that the subject-matter of granted claim 1 involved an inventive step over the disclosure of document D6. In support of the alleged prior use, inter alia, a witness was heard. The board, in the case at hand, overturned the evaluation of evidence made by the department of first instance because the opposition division erred as regards the underlying facts and failed to give an evaluation that was free of contradictions. The board gave its own evaluation of the evidence regarding the relevant facts. Even applying a high standard of proof ("beyond any reasonable doubt"), the board found that the basic facts presented by the witness with regard to the claimed structural features of a ventilator and an air conditioner in the prior use vehicles could not be questioned. The board also noted that further explanations given by a witness, in order to close a potential gap in the documentary evidence on file, could not be considered per se as new facts. Otherwise, hearing a witness would be meaningless, and evidence provided on the basis of documents would be given a higher evidentiary value than a witness testimony, for which no basis could be found in the EPC.
3.2 Archives and internet publications
In ex parte case T 2227/11 the appellant disputed that D1 and D2 were prior art under Art. 54(2) EPC. According to T 1134/06, the fact that an internet disclosure was state of the art under Art. 54(2) EPC should be proved beyond any reasonable doubt. The facts and evidence had to meet the criteria established by the case law in respect of prior use. Such evidence was not brought by the examining division. In the board's judgement, however, the examining division was right to comply with the practice followed at the EPO when citing documents retrieved from the internet provided in the Notice from the EPO concerning internet citations (OJ 2009, 456-462), which is of a later date than decision T 1134/06 referred to by the appellant. The examining division thereby also acted in accordance with the instructions provided in the Guidelines for Examination in the EPO in force at that time (C-IV, 6.2 – April 2010 version). In particular, the appropriate standard of proof for internet citations is the balance of probabilities. The EPO standard of proof is generally the balance of probabilities. By way of exception, the standard of proof of the balance of probabilities is shifted to a standard of proof beyond reasonable doubt mainly in opposition where only one party has access to information e.g. concerning an alleged public prior use. The difficulty for the other party of gaining access to information in support of no such public prior use having taken place, allowing it to counter-argue, has caused the case law to tend in this case toward expecting the public prior use to be proved beyond reasonable doubt. In the specific case of internet citations of prior art, both the EPO and the parties to the proceedings generally have equal access to the relevant information, notably concerning the authenticity of its publication date and content. Accordingly, there is no reason to deviate from the standard of proof of the balance of probabilities. Indeed, while the board agreed with the detailed reasoning in T 1134/06 that internet citations of prior art entail a number of difficulties in assessing the authenticity of, notably, the publication date and the content, in its judgement there is no reason to impose a stricter standard of proof. It is understood that these difficulties may require some far-reaching investigations into the matter and the provision of supporting evidence. In the board's view, however, it is not because the matter is more complicated that a stricter standard of proof should be adopted. The burden of proof generally lies with the party making an allegation. In the specific case of internet citations of prior art cited by the EPO, the burden of proof thus lies with the EPO. If the EPO, however, is satisfied that, on the balance of probabilities, an internet citation constitutes prior art, it is then up to the party to prove otherwise.
In T 353/14 the appellant (opponent) challenged the decision under appeal only insofar as the opposition division's finding on the public availability of document D10 was concerned. The opposition division had applied the usual "balance of probabilities" standard of proof when assessing whether D10 had been made available on the internet before the relevant date. This was not challenged by the parties and was, the board noted, in accordance with EPO practice as described in the Notice from the EPO concerning internet citations (OJ 2009, 456-462) and the instructions provided in the Guidelines for Examination in the EPO in force at the time (G-IV, 7.5 – September 2013 version). The board agreed that that had been the correct practice, as had been confirmed in T 286/10 and T 2227/11. In those two cases, the conclusion of the earlier decision T 1134/06 that the stricter standard of proof "beyond reasonable doubt" had to be applied to internet disclosures had been refuted. In T 353/14 the board concluded that D10 could not be considered as having been made available on the internet before the opposed patent's priority date.
4. Standard of proof
4.1 Public prior use
In T 202/13 several public prior disclosures were alleged by the respondents (opponents). The board considered S9 (a brochure) and D8. Concerning the first alleged prior use, there was agreement between the parties that the final version of "Technical Bulletin 1/96 – The Ram Rig Concept" was made available to the public between 6 and 9 May 1996, i.e. some days after the priority date. The respondents argued that S9 (a brochure with the same title) was made available to the public before the priority date of 3 May 1996 as it was sent to customers and displayed in the reception area. The respondents referred to the fact that the Norwegian courts accepted said brochure as state of the art. However, the board stated that that was not binding on the board, as the board had to take a decision on the basis of the evidence submitted to it. That evidence might differ from that presented in national proceedings, or be evaluated in a different way as a result of additional facts or evidence being made available. The board, having reviewed the evidence on file, came to the same conclusions as the opposition division, namely that the public availability of S9 prior to the priority date was not sufficiently proven. The board was not satisfied that S9 on file represented the version of the brochure which allegedly was made available to the public. Thus, it could not be concluded with certainty that S9 per se was publicly available at any time before the priority date of the patent. The second alleged public prior disclosure in respect of which the opposition division took a decision was the budget proposal D8. The issues disputed between the parties related to the question whether Mr F. had received D8 before the priority date of the patent, and whether the recipient could be considered a member of the public, i.e. a person not bound by an obligation to secrecy. It was also disputed what standard of proof should be applied to the present case, "up to the hilt" or the "balance of probabilities". The wording "up to the hilt" is used, like the equivalent "beyond reasonable doubt", to indicate a strict standard of proof, namely that the allegations need to be proven in such a manner that the deciding body, on the basis of a free evaluation of the evidence on file, can be sure that the alleged facts have actually occurred. In contrast thereto, the less strict standard "balance of probabilities" allows the deciding body to arrive at the conviction that an alleged fact has occurred if it is more likely to have occurred than not to have occurred. The board agreed with the appellant that the standard "up to the hilt", or "beyond reasonable doubt", was appropriate in the present case. One of the joint respondents 2 was the successor of the company directly involved in the alleged public prior disclosure because it created and dispatched the budget proposal D8 which was the subject-matter of the alleged prior disclosure and which was specifically prepared for its business partner. Respondent 2, as successor, had full knowledge of the actions alleged to constitute the public prior disclosure and full access to the sources of evidence, whereas the appellant was not involved and its position was therefore basically restricted to pointing to any inconsistencies or gaps in the chain of evidence. In this respect, the present case differed from the situations underlying decisions T 12/00, T 254/98 and T 729/91 referred to by respondent 1, in which the opponent alleging the public prior use was not involved in the circumstances relating to it.
In T 2338/13 the opposition division had rejected the opposition, concluding on the alleged prior use that, without evidence such as witness testimonies or written notes from conference attendees, it had been impossible to establish whether the content of A3 – a copy of a PowerPoint presentation given at a conference in 2002 – had indeed been made publicly available. During oral proceedings before the board, the author of that presentation and of two affidavits from 2011 and 2013 produced at first instance was heard as a witness. The board pointed out that the primary evidence of the alleged prior use, A3, was in the possession of that witness, who had been contacted by someone other than the party that had filed appellant 1's opposition whom the witness called "my friend" (transcript of witness hearing) and appellant 1 called a "third party". Appellant 1 was unable to specify how the witness, this third party and he were connected but, since it was he who was basing his case on A3 and the witness's testimony, he had to bear the consequences of this lack of information and A3 thus had to be deemed to lie within his power and knowledge. The witness was likewise considered to fall within his sphere of influence. Consequently, appellant 1 bore the burden of proving that A3's content had been made publicly available beyond any reasonable doubt.
After examining the evidence, the board concluded that A3's content had indeed been disclosed in the form of a poster. But discrepancies between the witness's affidavits and his oral testimony cast doubt on the reliability of his evidence. And regarding the alleged presentation's content, there was serious doubt as to whether it had included a part on beads, which appellant 1 had been unable to clear up, and doubt arising from inconsistencies between A4/A20 and A3. Thus, given those inconsistencies, appellant 1 had failed to prove up to the hilt that A3's content had been made publicly available. The board therefore disregarded this document when assessing patentability.
4.2 Public availability of prior art documents
In T 2451/13 D16 (a brochure) was filed by the respondent (opponent) with its response to the statement of grounds of appeal as a reaction to the opposition division's decision. This proof became necessary after the opposition division changed its mind and decided at the oral proceedings that D2 was not in fact prior art. The board concurred with the appellant that, if the public availability of a certain document is questioned, it is an appropriate reaction to file direct evidence as to when it was published. However, at least in the present case, it was considered equally appropriate to file evidence that the teaching in this document, rather than the document itself, was available to the public before the priority date of the patent. The appellant (patent proprietor) argued that, as set out in T 1257/04, a copyright date was of little value as evidence of public availability on that date. Moreover, the appellant argued that the applicable standard of proof had to be "up to the hilt", i.e. absolute certainty rather than merely the balance of probabilities, since D16 originated from a company which was now a subsidiary of the respondent. Concerning the standard of proof, the board considered the case law in detail, starting from T 472/92. It came to the conclusion that, if the publication date of a document originating from an opponent (or a subsidiary thereof) is in dispute, the opponent must prove that date "up to the hilt". The yardstick for this proof is that of "beyond reasonable doubt" rather than "absolute certainty".
5. Burden of proof
5.1 Apportioning the burden of proof
In T 30/15 the appellant (patent proprietor) justified the late filing of T18 (tests) by arguing that it was simply responding to the board's preliminary opinion and that it neither could nor should have submitted T18 earlier because the opposition division's objection under Art. 83 EPC had been based solely on T14 (dissertation). The board disagreed, holding that its preliminary opinion on this matter did not amount to a new objection, but simply summarised those in the opposition division's decision. Filing T18 late was therefore unjustified. T18 raised issues that could not be dealt with without adjourning the oral proceedings to give the respondents the time needed to conduct counter-tests (Art. 113(1) EPC).
The appellant also argued that it was up to the respondents to prove the invention's non-compliance with Art. 83 EPC in their reply to its statement of grounds of appeal. It did not have to accompany that statement with evidence that the subject-matter could indeed be carried out because, whatever the circumstances, the opponents always bore the burden of proving the insufficiency of the invention's disclosure; that was even true on appeal after a patent had been revoked on the ground of an insufficient description, and especially true if the reasons for the contested decision were no longer prejudicial to the appellant following an amendment to the claimed subject-matter. The board disagreed, finding that, under Art. 12(2) RPBA, the statement of grounds of appeal had to contain a complete case. Moreover, the opponents had already submitted sufficiently credible evidence for the opposition division to revoke the patent under Art. 83 EPC. Its reasoned decision had closed the opposition proceedings and thus meant that the parties' roles were reversed on appeal: once a patent had been revoked, it was up to the proprietor, as the appellant, to take a more active role, starting with presenting a detailed line of argument in its statement of grounds of appeal, even if the reasons underlying the contested decision seemed no longer to apply to a new set of claims. It could no longer just wait for the respondents to prove the patent's invalidity but had to provide full – not selective – proof that the requirements of Art. 83 EPC had been met, and without waiting for the board or the respondents to invite it to do so.
In this regard, appeal proceedings were not a continuation of opposition, rather new proceedings initiated by the appellant in which, therefore, the rules that had governed opposition were no longer necessarily applicable, the boards' rules of procedure having taken their place, particularly the requirement to submit all the reasons why the contested decision could not be upheld. A proprietor acting in the belief that it could invalidate the basis for that decision with appeal grounds limited to a single aspect of it ran the risk that any supplementary reasons or evidence it submitted later on in appeal proceedings might be considered to have been filed late under Art. 13(1) and/or (3) RPBA, for example.
5.2 Shifting the burden of proof
In T 473/13 the board was of the opinion that it was highly likely that, in the circumstances of the case, as part of the co-operation between the respondent (patent proprietor) and the utility company VB-Elnät, employees of VB-Elnät would have gained knowledge of the technical nature of the patent proprietor's equipment. The board therefore agreed with the intervener that the issue which needed to be decided in order to determine whether information concerning the prior use was made available to the public was whether those employees were bound by a confidentiality agreement. The board also agreed with the intervener that, in the circumstances, the burden of proof initially lay with the respondent to establish the existence of a confidentiality agreement. Concerning this issue, the respondent had presented arguments that, in the context of a co-operation project between two companies in this technical field, the normal practice was at least to have an implicit duty of confidentiality on both companies involved. The respondent had, moreover, presented supporting evidence for this in the form of an affidavit by the project manager (and inventor of the patent in suit). Contrary to the argument of the intervener, the board considered these arguments and the supporting evidence to be sufficient to discharge the initial burden of proof on the respondent in this respect. The board considered, moreover, that the much-cited "up to the hilt" criterion did not apply in the present circumstances, since the case law in this respect had been developed for the situation in which a prior use was by the opponent, which was not the case here.
Thus, in the board's view, the burden of proof shifted to the intervener to establish that there was no confidentiality agreement. The intervener had, however, presented no arguments or evidence which objectively might cast doubt on the existence of a confidentiality agreement, but had merely presented speculation in this respect. The intervener did not try to contact the utility company VB-Elnät, with which the patent proprietor had a co-operation, to enquire of them whether they considered a confidentiality agreement to have been in place. The intervener also did not make enquiries of other organisations active in the technical field in order to address the question whether such confidentiality agreements represented normal practice.
The board concluded that the public nature of the prior use was not proven, such that it did not form part of the prior art.
G. Suspected partiality
In T 355/13 the appellant suspected the board of partiality, inter alia because it had not provided a provisional opinion on decisive aspects of the case and because it had issued a summons to oral proceedings instead of remitting the case to the department of first instance. Referring to G 6/95, the board stressed that there was no procedural obligation for the board to issue any provisional opinion, and that in inter partes proceedings it was not possible to automatically follow a party's request without giving the other parties the possibility to be heard on that request (in oral proceedings, if requested). The board considered the partiality objection inadmissible, as it was based on an obviously wrong interpretation of the board's procedural obligations, the right to be heard and the principle of a fair trial.
H. Formal aspects of decisions of EPO departments
In T 1254/11 the board held that an opposition division enlarged to four members pursuant to Art. 19(2) EPC 1973 could in principle be reduced again to three members. It was for the four-person panel to decide on the reduction. In this respect the board concurred with T 990/06. In deciding on the reduction, the opposition division consisting of four members must properly exercise its discretion. The board assumed that the fact that neither a decision to enlarge nor a decision to reduce the opposition division had been added to the publicly available file and the fact that the appointment of the new chairman could only be traced from the internal register of the EPO both constituted fundamental deficiencies of the proceedings before the opposition division. However, unlike in T 990/06, it was possible to determine from the file that the division had been lawfully enlarged and, at a later stage, lawfully reduced again.
In the opposition proceedings underlying T 1088/11, the opposition division had been enlarged by a legally qualified member. However, the impugned decision rejecting the opposition did not bear the electronic signature of that legally qualified examiner, but only those of the chairman and the first and second examiners.
According to the board, under Art. 19(2) EPC the opposition division in its correct composition at the time of taking the decision is competent to take the decision. A decision on enlargement must be taken by the opposition division in a three-person composition, and a decision on reduction by the opposition division in a four-person composition. Decisions of opposition divisions not only must be taken in the correct composition, but must also be seen to have been taken in the correct composition, both by the parties and by the public (T 390/86, point 7 of the Reasons). Where an opposition division has been enlarged pursuant to Art. 19(2) EPC, but the case is nevertheless decided in a composition of three members, there should be clear evidence on the public file that a decision to set aside enlargement was taken by the opposition division in its four-member composition prior to the final decision.
In the case before the board, the only indication on file that the decision to enlarge the opposition division had been set aside was the following statement in the reasoning of the final decision taken in a composition of three examiners: "the enlargement of the division is no longer necessary and the decision for the enlargement is set aside". There was no evidence on the public file that the purported setting aside of the enlargement had been decided in a four-member composition, or any indication of a separate decision on this matter. Therefore, the part of the contested decision dealing with the reduction of the opposition division constituted the decision to set aside the enlargement and was taken by the opposition division in the wrong composition.
I. Corrections of errors in decisions
Ex parte case T 1785/15 is a case applying directly the findings of G 1/10. R. 140 EPC is not available to correct the text of a patent, and a proprietor's request to that effect is inadmissible whenever made. The board recalled clearly the principles, the scopes of both R. 139 and R. 140 EPC respectively, and the relationship between the intention to grant a European patent (R. 71(3) EPC), the decision to grant a European patent (Art. 97(1) EPC), and the possibilities of correcting errors. The board in this case concluded that the appellant's request for correction was inadmissible, as the appellant, having approved the granted text, was not adversely affected by the decision to grant on the basis of that text. As he had approved the text, the responsibility for any errors left in the text was his own. G 1/10 does not foresee the possibility of appeal for a proprietor in a case where despite having consented to the version of the patent to be granted, amendments to this text are subsequently sought. After the decision to grant, the claims can only be amended in procedures where this possibility is specifically mentioned, namely in limitation or opposition proceedings (G 1/10, point 13 of the Reasons).
J. European Patent Register
The question in J 17/14 was whether the EPO had been wrong to transfer a European patent application to the appellant as the respondent's successor in title, and right to order the respondent's reinstatement. Under R. 22(1) EPC, such transfers are recorded in the Register on request, upon production of documentary evidence. At issue between the parties was firstly whether the Legal Division had set the burden of proof too low, and secondly whether it could simply rescind the transfer at the request of the respondent who had originally been recorded as the proprietor. The board ruled that the reversal of a transfer in the Register was not necessarily justified simply because doubts subsequently arose as to whether the claimed succession had been satisfactorily proven; once an application was transferred to a successor in title, the Register formally identified him as its proprietor, and all the rights that entailed could not then be summarily withdrawn. Also at issue was which of the parties was actually entitled to the applications and entries in question. The board found that under the European patent system only national courts could decide that (see also G 3/92), so in such cases the best course would often be to leave the original Register entry unchanged, and simply stay the grant or opposition proceedings pending the national court's final decision.
K. Observations by third parties
In T 1756/11 the board noted the following: because Art. 115 EPC sets no upper time limit for presenting third-party observations, in principle they can also be filed after expiry of the opposition period, and so even during inter partes appeal proceedings. Recent decisions, however, had established that anonymous third-party observations received at a very late stage of opposition appeal proceedings are to be disregarded altogether on formal grounds, in order to preclude covert abuse of procedure by parties to the proceedings (see T 146/07, which goes against the notice from the EPO concerning the filing of third-party observations in first-instance proceedings, OJ 2011, 418 and 420). Although the Art. 114(2) EPC provision on late-filed submissions mentions only the parties to the proceedings, established case law holds that submissions (i.e. facts and evidence) emerging from third-party observations not filed until after expiry of the opposition period are likewise to be treated, by way of a legal fiction, as "late": this means that Art. 115 EPC cannot serve to extend third parties' rights, let alone extend them beyond the rights of parties to the proceedings (see T 951/91, OJ 1995, 202). Third-party observations are subject to the criteria developed in the case law for the boards' exercise of discretion in deciding whether to admit late-filed submissions. The board observed that, in view of the notice from the EPO concerning the filing of third-party observations in first-instance proceedings (see OJ 2011, 418 and 420), the opposition divisions should at least comment on the relevance of third-party observations, for example in the summons to oral proceedings. The boards usually have to disregard late-filed third-party observations in opposition appeal proceedings of their own motion, unless they relate to amendments to the claims or other parts of the patent made during the opposition or appeal proceedings. In that case, a board can, under certain circumstances, in the course of examining these amendments either disregard a third party's late-filed submission or, where appropriate, admit it into the proceedings and consider it at its discretion; see Art. 12(4) and 13(1) and (3) RPBA.
1. Authorisations for appointment of a representative
In case J 19/13 the main line of argument put forward by the applicant (appellant) was that the deficiency concerning the signature on the request for grant had the legal consequence that the application did not constitute a "valid and regular filing" and was therefore invalid ab initio because the requirements of Art. 78 EPC were not met. The board, however, did not share this view. A form drawn up by the Office in accordance with R. 41(1) EPC must be signed by the applicant or his representative. The representative who electronically signed the request for grant (EPO Form 1001E) was not a valid signatory for the applicant. A procedural act performed by a non-entitled person is to be treated in the same way as a missing signature. For the electronic filing of a document accompanied by the electronic signature of an unauthorised person, the same principle applies, as confirmed, for instance, in T 1427/09 (point 8 of the Reasons). Therefore, the request for grant form was to be considered not signed. The signature of the applicant or his representative forms one of the requirements for the content of the request for grant (cf. R. 41(2)(h) EPC). The signature on the request for grant is, however, not one of the requirements for the accordance of a date of filing pursuant to Art. 80 EPC and R. 40 EPC. A legal consequence which could be described as invalidity ab initio exists with respect to non-fulfilment of the requirements for a date of filing, but not in respect of a deficiency concerning the signature on the request for grant. The board detailed the legal consequences that a deficiency concerning the signature on the request for grant has.
The appellant further argued that the application should not have proceeded since the representative had not confirmed his appointment for the application. A requirement, as suggested by the appellant, to the effect that the representative who is specified in the request for grant but who did not sign the form would need to confirm his appointment by a later (counter-)signature of the request for grant form cannot be derived from the provisions of the EPC. If the representative's appointment had not been correct, he could have informed the Office accordingly. However, this would not have resulted either in the application being invalid ab initio. Instead, if the Office had become aware of such a deficiency, the applicant, obliged to be represented pursuant to Art. 133(2) EPC, would have been invited under R. 58 EPC to correct the deficiency by appointing a new representative. However, due to the fact that representation by a professional representative is not mandatory for the filing of a European patent application, non-appointment of such a representative despite the invitation to do so could only have led to one of the "negative" terminations of the grant proceedings, namely the refusal of the application. A deficiency concerning the appellant's representation did not seem to have existed in the case at issue.
In T 2453/12 opponent 2's notice of opposition had been filed under the name of an already defunct company and rejected as inadmissible by the opposition division at the oral proceedings. Its representative had then been issued with authorisation to act for opponent 1 during the remaining proceedings. On appeal, both opponents (appellants) contested the opposition division's decision to reject opponent 2's opposition. Taking the view that one opponent's representative could not now act for the other opponent too, the patent proprietor (respondent) requested that the board refer questions on whether it was admissible for the same representative to represent more than one party to the Enlarged Board. The opponents argued that opponent 1's original representatives – who were anyway its employees – remained authorised to represent it and that the appeal lodged by those representatives was therefore admissible. Contrary to what the respondent asserted, there had been no change of representative; opponent 1 had merely issued opponent 2's representative with a sub-authorisation during the opposition proceedings.
The board observed that, under Art. 133(1) and (3) EPC, legal persons having their principal place of business in an EPC contracting state were not compelled to be represented by a professional representative in EPO proceedings and were instead free to have a duly authorised employee act for them. That applied irrespective of whether they chose also to authorise a professional representative in parallel; parties could never deprive themselves of the right to represent themselves by issuing authorisations. For that reason alone, there could be no doubt that opponent 1's in-house representatives had been entitled to lodge its appeal. In the opposition proceedings, they had merely issued opponent 2's representative with a sub-authorisation to act for opponent 1 during the remainder of those proceedings. That could by no means be considered evidence of a change of representative. The board could see no reason to reject opponent 1's appeal as inadmissible.
2. Oral submissions by an accompanying person
In T 1693/10 the contested sub-authorisation given to a second professional representative had eventually been withdrawn. This second representative of the appellant was regarded from then on as assisting the first representative as an "accompanying person" within the meaning of G 4/95 but was not permitted to speak at the oral proceedings because at least one of the criteria laid down in that decision for such permission had not been met. The board dismissed the objection raised by the respondent under R. 106 EPC to the fact that the accompanying representative was beside the appellant's professional representative during the oral proceedings and not in the audience. One of the grounds for dismissal was that the respondent had failed to indicate how the mere presence of the accompanying person beside the appellant's professional representative infringed the rights invoked, which included the right to a fair hearing, a right not on the exhaustive list in Art. 112a(2) EPC. The board was in addition not competent to decide on possible conflicts of interest. The respondent's mere assertion that the accompanying person, who had worked for the firm of the respondent's representative, had had access to confidential information on the matter at issue had not been substantiated. Since the respondent had in any event not objected to the appellant's actual representative, there was no need to decide on the question.
IV. PROCEEDINGS BEFORE THE EPO
A. Examination procedure
1. Amendments – discretion of the examining division under Rule 137(3) EPC
In T 918/14, because the international search had been incomplete on the basis of Art. 17(2)(a) PCT and the examining division had not conducted a required additional search, the appellant had found itself having to make amendments that might later prove to be pointless because it did not know the state of the art. The board ruled that it could not have been expected in these circumstances to deal appropriately with the examining division's communications or foresee what direction its examination would take.
It found that, in refusing to admit claim amendments after having failed to carry out an additional search (even though there was good reason to do so) and made only vague remarks on those amendments' patentability, the examining division had exceeded its discretion under R. 137(3) EPC and so committed a serious procedural error.
Moreover, for a search and examining division to have carried out an incomplete search and then – despite the applicant's objections and amendments – not conducted an additional search for its new sets of claims, instead raising vague "pinprick-like" objections to patentability, was in itself a serious procedural error.
2. Additional searches during examination
In T 779/11 the examining division based its objections of lack of inventive step on what it considered to be notorious prior art. The appellant contested the correctness of the declaration under Art. 17(2)(a) PCT issued by the EPO acting in its capacity of ISA and argued that the examining division had committed a substantial procedural violation by not carrying out a prior-art search. The board adopted the view taken in T 1242/04, where the board had held that in certain circumstances it was not always necessary for the examining division to carry out an additional search in the documented prior art. In particular, it was legitimate to refuse an application for lack of inventive step where the objection was based on knowledge that was "notorious" or indisputably formed part of the common general knowledge. This approach had been followed in a number of other decisions. On the merits, the board was not convinced in the present case, that the existence of this common general knowledge at the priority date could not reasonably be disputed. In such circumstances, the existence of common general knowledge needed to be proved by evidence. The case was therefore to be remitted to the examining division for further prosecution, in particular for carrying out an additional search. Finally, the board examined ex officio whether reimbursement of the appeal fee was equitable by reason of a substantial procedural violation (cf. J 3/14). It noted that it was established case law that features not contributing to the technical character of the invention are not taken into account in assessing inventive step. Hence the examining division did not need to give reasons why those features were part of the common general knowledge of the skilled person. Accordingly, the board considered that no substantial procedural violation had occurred in connection with the lack of a prior-art search.
3. Amendments relating to unsearched subject-matter – Rule 137(5) EPC
In T 736/14 the board stated that Guideline H-II, 7.1 (version 2013), (entitled "Restriction to a single, searched invention") is concerned merely with a possible switch of the invention to be examined to another one after the applicant has indicated that it wants a specific searched invention to be further prosecuted and the examining division considers the subject-matter of the selected invention to be unallowable. The decision under appeal cited R. 137(3) EPC, among others, as the legal basis for not admitting the claims of the first invention into the examination proceedings. The board noted that the EPC contains no explicit provisions about how to proceed if an applicant whose application is non-unitary responds unclearly or in a misleading way to an invitation from the examining division to specify which searched invention it wishes to prosecute further. However, the board held that, in the present case, Guideline H-II, 7.1 should not have been applied at all when refusing to admit the auxiliary request, since the applicant did not clearly indicate the invention to be further examined at that stage of the examination proceedings. By selecting and examining the second invention, the examining division created a fait accompli, which later led to the non-admittance of the claims of the first invention under R. 137(5) EPC and the refusal of the application under Art. 113(2) EPC 1973. The board held that, if an applicant whose application is non-unitary responds unclearly and/or in a misleading way to an invitation from the examining division to designate which searched invention it wishes to prosecute further, it could not be automatically assumed that the applicant selected the invention covered by the main request for examination. Rather, the examining division had to clarify, e.g. via a further communication, which of the searched inventions the applicant actually wanted it to examine. Confronting the applicant with an irrevocable decision not to admit an auxiliary request covering one of the inventions searched, without giving an opportunity to comment on its admissibility beforehand, constituted a substantial procedural violation of the applicant's right to be heard. The board decided to remit the case to the examining division for further prosecution on the basis of the first invention, filed as auxiliary request, or the second invention, filed as main request. It also ordered the reimbursement of the appeal fee.
B. Special features of opposition and appeal proceedings
1. Transfer of party status
1.1 Transfer together with the business assets to which the opposition relates
In T 423/11 of 11 March 2015 the board was concerned with the validity of the transfer of the opposition from SAGEM SA to SAGEM Défense Sécurité. According to the board it resulted sufficiently from the "reiterative agreement" that the assets transferred to SAGEM Défense Sécurité were those in whose interest the opposition had been filed. The opposed patent related to the field of aircraft flight data systems. This meant that the field of the opposed patent fell within the assets transferred, namely in the "navigation and aeronautical systems" division. The objection that not all the corresponding assets had been transferred, because exceptions had been made for some patents, had no bearing. It was true that some patents had not been transferred and only a licence had been given. However a licence conferred on the licensee the necessary rights to undertake any action to defend the patent under licence. Therefore those exceptions did not deprive the transferee of the general rights conferred on it by the transfer of the other assets.
The board noted that the long time delay, more than eight years, between the transfer and the request to the EPO to register the transfer, was open to criticism. However, there was no indication on the file that it was intended to obscure the true situation. The respondent also suffered no harm from the fact that, as it complained, it was kept in the dark as to the true identity of the opponent. The board concluded that the transfer of opponent status was valid.
1.2 Effect of finding that no transfer took place during opposition proceedings
In T 194/15 the notice of opposition had been filed on 30 August 2012 by Abbott Laboratories ("Abbott"). On 3 January 2013 the opponent filed a request for a transfer of the opposition from Abbott to AbbVie Inc ("AbbVie"). The opposition division accepted and implicitly decided that AbbVie was the new opponent.
The board concluded on the basis of the evidence filed with the request for the transfer of the opposition that the date of the transfer of the relevant business assets was 1 August 2012. Thus, when the opposition was filed, the business assets in the interest of which the opposition was filed had already been transferred to AbbVie. Accordingly, the opposition could no longer be transferred to AbbVie. The opposition proceedings were thus continued with the wrong party as opponent.
The board then considered whether or not to remit the case to the opposition division. It recalled that in circumstances like the present ones, the board in case T 1178/04 had held that requests made by the wrong party during the proceedings before the opposition division were inadmissible, and saw no other means to correct this procedural deficiency than to order remittal of the case to the opposition division so that the proceedings could be conducted with the right party. The board in case T 1982/09, in the same circumstances, had considered in accordance with Art. 11 RPBA whether there were any "special reasons" speaking against remittal. In the end it decided against remittal.
In the present case, the board considered whether there were any "special reasons" against remittal. Whilst well aware of the negative consequences that remittal entails, the board did not see any "special reasons" justifying non-remittal and decided to remit the case to the opposition division so that the proceedings could be conducted with the right party.
2. Intervention – procedural status of intervener
In T 614/13 (2 July 2015) the board had to rule on the admissibility of an intervener's appeal against the opposition division's decision to reject its opposition because it had not shown that it had intervened in the opposition proceedings in time. The board held that, even if it upheld the opposition division's decision, that would not mean the intervener had never been a party to the proceedings, but only that as from the date on which decision on appeal took effect it would no longer be entitled to take part in the (further) proceedings. Until that point in in time its procedural status would be confined to obtaining clarification as to whether it was entitled to take part.
3. Continuation of opposition proceedings after lapse or surrender
The board in T 740/15 interpreted R. 84(1) EPC to mean that if the opponent files a request for continuation of the opposition proceedings within the given time limit, the scope of discretion of the opposition division provided in R. 84(1) EPC was thereby limited to only one possible lawful decision and this was the continuation of the opposition proceedings. The board noted that this understanding found support in the travaux préparatoires of the EPC 1973.
In T 500/12 the board granted the request filed by the appellant (opponent) for continuation of the appeal proceedings. The appellant had provided evidence from several national patent registers showing that the opposed patent had not lapsed in all contracting states and was still in force. The appellant further submitted that the annuity fees could be paid not only by the patentees but also by a third party. Furthermore, annuity fees could still be validly paid with a surcharge in many of the contracting states and, even if they were not paid with a surcharge in due time, reinstatement periods also had to be considered.
In T 383/13 the respondent (opponent) asked the board to order a different apportionment of costs under Art. 104(1) EPC, having attended oral proceedings for which the appellant had announced its absence by letter dated just two days beforehand. The board held that if a party was late in deciding not to attend oral proceedings or in informing the board or other party of that decision, awarding costs against it may well be justified – if those costs were directly caused by not letting them know in time. In exercising that discretionary power, the board should apply the standard laid down in T 1079/07. In the case in point, the oral proceedings were not superfluous: the board would not have cancelled them even if informed of the appellant's absence well in advance, because it wanted to be able to decide the case at the oral proceedings and close it on that date. That the board's provisional opinion had been in the respondent's favour was immaterial; that opinion merely set out preliminary views that in no way bound the board when taking its final decision. Any diligent professional representative had a duty to attend oral proceedings even if the provisional opinion was in his favour and the other party did not come. The board concluded that it was not appropriate in the present case to order a different apportionment of costs under Art. 104(1) EPC.
C. Opposition procedure
1. Filing of opposition in due time
In T 2061/12 the appellant (patentee) challenged the filing and admissibility of the opposition, as it had been filed by a fax received at the EPO eleven seconds after midnight of the final day of the opposition period.
The board recalled that the EPO distinguishes between fax parts received before and after midnight, according them different dates of receipt (T 683/06, T 2133/10; decision of the President dated 12 July 2007, OJ SE 3/2007, 7). In this case, as indicated on the first page, transmission (from Great Britain) had started at 22.57 hrs GMT. The time recorded by the EPO, at the bottom of each page, as marking the end of transmission was eleven seconds past midnight (CET), so the process had taken about three minutes, or about 20 seconds per page. If transmission had started at nearly 22.58 hrs, its speed was then around 13 seconds per page. At a rate of between 13 and 20 seconds, only the last page and possibly part of the penultimate one would have arrived after midnight. Form 2300 signed by the representative, the payment form and at least the first two pages of the notice of opposition – with at a minimum a reasoned novelty objection – had all certainly reached the EPO before midnight. The opposition had therefore been filed in due time under Art. 99(1) EPC, and complied with R. 76(1) and (2) EPC. It was therefore also admissible (R. 77(1) and (2) EPC).
2. Correction of opponent's name – evidence of original intention
The availability of R. 139 EPC to correct the name of the opponent was confirmed by T 615/14 as follows. A request to correct the designation of the opponent in the notice of opposition is allowable under R. 139, first sentence, EPC provided that it complies with the principles endorsed in G 1/12 (OJ 2014, A114), in particular that it reflects what was originally intended when filing the notice of opposition, that it does not give effect to a change of mind or development of plans and that it represents the opponent's actual rather than ostensible intention. The original intention at the time of filing the opposition can also be established on the basis of evidence submitted after the expiry of the opposition period.
3. Fresh ground for opposition against amended claim
In T 565/13 the ground under Art. 100(b) EPC had not been invoked in the notice of opposition, and was not raised during the opposition proceedings. The appellant (opponent) nevertheless argued during the oral proceedings before the board that the subject-matter of the claims of auxiliary request 1 was not sufficiently disclosed. The board found that claim 3 of the request limited the subject-matter of claim 1 of the patent as granted merely by requiring that the claimed product should be obtainable by the process of claim 1, which was identical to claim 13 as granted. The alleged deficiency was therefore already present in the claims as granted. Under these circumstances, such a fresh ground for opposition could only be examined with the consent of the respondent (G 10/91), which had not been given. Thus, this fresh ground could not be admitted into the proceedings.
4. Late-filed submissions in opposition proceedings
In T 1883/12 the board confirmed the decision of the opposition division that the documents D5 to D12 should not be admitted into the proceedings. The board referred to the established case law that a discretionary decision such as the admission or not of late-filed evidence is open to review only to determine whether or not discretion was exercised properly, that is according to the proper principles. The relevant criteria for whether or not to admit late-filed submissions were set out e.g. in the Guidelines, E-V.2, which mentioned prima facie relevance as the most important (but not exclusive) criterion. Prima facie relevance was ascertained on the face of the facts, i.e. with little investigative effort, which reflected the need for procedural expediency in considering, and admitting late-filed facts and evidence. The interest in procedural expediency was also expressed in the common approach of T 1557/05 not to admit late documents if prima facie no more relevant than what is already on file. In this regard the board added that relevance was decided in relation to facts to be proven, and if late documents, on the face of it, are no more relevant to that fact than admitted evidence and thus appeared to add nothing, it was perfectly reasonable in the interest of procedural economy not to admit them.
In T 66/14 the opponent had submitted a number of documents after expiry of the nine-month opposition period under Art. 99(1) EPC but before the final date for making written submissions in preparation for the oral proceedings within the meaning of R. 116(1) EPC. Referring to the case law, the board observed that evidence first submitted after expiry of the opposition period was generally to be regarded as late for the purposes of Art. 114(2) EPC, and that R. 116(1), fourth sentence, EPC was not to be understood to mean that a fresh period during which new evidence could be filed without being treated as late was triggered on issue of the summons to oral proceedings (see T 841/08).
New evidence submitted after the R. 116(1) EPC date had to be admitted if the subject of the proceedings had changed, but as that had not been the case here, the question was whether the opposition division had exercised its discretion properly, i.e. in accordance with the right criteria, in concluding that the documents in question were no more relevant or illuminating than those filed on time and could therefore be disregarded under Art. 114(2) EPC.
It was the boards' settled case law that an opposition division had to examine whether late-filed evidence was prima facie relevant. The decisive factor, however, was not whether such evidence was even more relevant than a previously filed document, but rather whether it was prima facie relevant for the outcome of the case (see T 1652/08). That could not be assessed in isolation from the arguments put forward by the party submitting the late document; in exercising its discretion, the opposition division had to consider what objection the late-filed document was supposed to substantiate.
5. Applicability of Rule 43(2) EPC in opposition proceedings
(CLB, IV.D.4.1.4 c))
In T 830/11 the opposition division had refused to admit an auxiliary request under Art. 114(2) and R. 116(2) EPC because the three independent apparatus claims did not fulfil the requirements of Art. 84 EPC 1973 (conciseness) and R. 43(2) EPC (multiple independent claims in the same category). The claims related neither to interrelated products nor to different uses nor to alternative solutions to a particular problem. The board found that the opposition division had not exercised its discretion correctly. In its decision it had noted that "Art. 84 EPC 1973 and R. 43(2) EPC have to be fulfilled, regardless of the fact that Art. 82 EPC only relates to the application". This was tantamount to depriving decision G 1/91 of any effects, since it led to the finding that a request including a plurality of independent claims must be rejected for this very reason. In the board's judgement, the condition of conciseness of Art. 84 EPC 1973 and the provisions of R. 29(2) EPC 1973 (R. 43(2) EPC) had to be construed in opposition proceedings in the light of the finding in G 1/91, point 4.2 of the Reasons, that "the administrative purposes of unity are fulfilled in the main up to the time the patent is granted. ... In view of the object and purpose of both unity and opposition, it seems neither necessary nor appropriate to continue to attach importance to any lack of unity at the opposition stage. Once the examination procedure has been concluded with the grant of a patent, the requirement of unity has fulfilled its administrative function." R. 29(2) EPC 1973 (R. 43(2) EPC) should not constitute an obstacle to defending the patent in all its branches (cf. T 263/05, OJ 2008, 329, and T 1416/04). The board emphasised that it was not questioning the general applicability of Art. 84 EPC 1973 as to conciseness and of R. 29(2) EPC 1973 (R. 43(2) EPC) in opposition proceedings. It merely considered that these norms did not apply to sets of claims whose subject-matter was already claimed in the granted version of the patent.
6. Clarity of amendment – feature of granted claim taken out of context – applicability of G 3/14
Claim 1 of auxiliary request 1 filed in opposition appeal proceedings T 248/13 was to a process for manipulating the flavour of a single mass of chocolate, in which the flavour attribute was defined as "a consumer-recognisable flavour associated with chocolate, other than chocolate flavour enhancement or an overriding, dominant flavour different to chocolate". The board found this definition to be unclear and, with reference to G 3/14, rejected the proprietor's argument that the amendment could not be attacked under Art. 84 EPC in opposition appeal proceedings since this feature was already present in dependent claim 15 as granted. It was true that claim 15 as granted also contained the ambiguous terms "consumer-recognisable", "chocolate flavour enhancement" and "overriding, dominant flavour". However, unlike claim 1 in issue, where these terms referred to the ingredient (flavour attribute) to be added to the chocolate, in claim 15 as granted they defined the flavour of the final chocolate ("chocolate however manufactured"). By taking these terms out of the context in claim 15 as granted (final chocolate) and placing them in the context of claim 1 in issue (ingredient to be added to the chocolate) a new ambiguity was introduced that was not present before. Therefore this amendment was objectionable under Art. 84 EPC, and auxiliary request 1 was held not allowable.
D. Appeal procedure
1. Board competent to hear a case
The question for the board in T 854/12 was whether it was competent to decide itself whether proceedings had been interrupted under R. 142 EPC, or had to arrange for the Legal Division to take a decision in this regard. It found that a decision-making board had to ascertain for itself whether, based on the facts submitted and any additional facts it had had to investigate of its own motion, the conditions for an interruption had been met, if its decision depended on this point.
It thus saw no reason to involve the Legal Division first, even though the decision of the President of the European Patent Office dated 10 March 1989 (OJ 1989, 177) provided:
"1. Sole responsibility for the following duties shall be vested in the Legal Division: …
1.2 Register of Patents ... (b) Interruption and resumption of proceedings (Rule 90 EPC)."
That was how the Legal Board of Appeal had proceeded in J 49/92, J 26/95 and J 12/98 (the appeals in the last two cases having been filed against examining division decisions). Technical boards of appeal too had always examined themselves whether proceedings had been interrupted (see for example, T 315/87, T 15/01, T 65/05, T 1476/05, T 710/06, T 1451/06).
The board conceded that there was the additional option of directly asking the Legal Division to decide whether to enter an interruption of proceedings in the European Patent Register; its responsibility for decisions in respect of Register entries arose directly from Art. 20 EPC. But it could remain open in this case whether or not the Legal Division, as a first-instance body, was indeed still also competent to take the actual decision to be entered once an appeal was already pending. Making an entry in the Register was not constitutive, and neither Art. 20 nor any other provision of the EPC bound the board to follow other departments' decisions whenever it had to consider interruptions of proceedings of its own motion. It therefore had to decide for itself anyway whether the conditions for an interruption had been met.
Besides, the Legal Division's responsibility for decisions in respect of Register entries under Art. 20 EPC could not be regarded as relieving the boards of their responsibility under Art. 21(1) EPC for handling appeal proceedings. That responsibility covered both deciding on the substantive merits of an appeal and settling any ancillary procedural matters.
2. Form and time limit of appeal – appeal filed within the time limit
In T 1325/15 the board addressed the question whether an appeal had to be found inadmissible or deemed not to have been filed if the notice of appeal was filed, and the appeal fee paid, only after expiry of the time limit for filing the notice of appeal (see also T 2017/12, OJ 2014, A76, and T 1553/13, OJ 2014, A84). The board held that, although there was no doctrine of binding precedent under the EPC, the principles of legal certainty and uniform application of the law required a board to take into account earlier decisions. The board saw no compelling reason to deviate from the established approach of regarding an appeal filed out of time as deemed not to have been filed. Numerous provisions of the EPC specified that a certain document had to be filed within a particular time period or "in due time". In almost all cases, the EPC specified the legal consequence of not filing the document "in due time" without, however, distinguishing between late filing and non-filing. Thus, the general rule was that the late filing of a document was treated in the same way as its non-filing (a possible exception being the special case of the priority period of Art. 87(1) EPC). Art. 108, first sentence, EPC required that notice of appeal be filed within two months of notification of the decision. If no notice of appeal was filed, no appeal came into existence. Although the position that R. 101(1) EPC means that a late-filed notice of appeal brings into existence an inadmissible appeal might be not unreasonable, the board considered, in view of the general rule that no distinction was to be made between the late filing and the non-filing of a document, that no appeal exists where a notice of appeal was not (deemed to be) filed in due time. The board noted that its approach, although not always consistently applied in the jurisprudence of the boards of appeal, was also in line with the reasoning in earlier decisions that an appeal was deemed not to have been filed where the appeal fee had been paid in time but the notice of appeal had been filed only after expiry of the two-month period of Art. 108(1) EPC (see in particular J 19/90, points 1.2.2 and 4 of the Reasons; T 445/98, points 1.2, 5, 6 and 7 of the Reasons; and T 778/00, OJ 2001, 554, point 6 of the Reasons). In the case before the board, the appeal was thus deemed not to have been filed and the appeal fee was reimbursed.
3. Reformatio in peius – exception to the prohibition
In T 2129/14 the inadmissible amendment concerned four elements of the claimed system and some relationships between them. Compared with claim 1 of the request found allowable by the opposition division, in claim 1 of the second auxiliary request three features were deleted. As a result, the protection was extended with respect to that of the request on the basis of which the patent would have been maintained if the opponent and sole appellant had not appealed. Under such circumstances the opponent and sole appellant was in a worse situation than if it had not appealed. The present case fell under the same circumstances as in G 1/99, in which the Enlarged Board held that "in principle, an amended claim, which would put the opponent and sole appellant in a worse situation than if it had not appealed, must be rejected". Hence, in principle, the conclusion of the Enlarged Board would apply and the patent would have to be revoked. However, the Enlarged Board also held that "an exception to this principle may be made in order to meet an objection put forward by the opponent (appellant) or the board during the appeal proceedings, in circumstances where the patent as maintained in amended form would otherwise have to be revoked as a direct consequence of an inadmissible amendment held allowable by the opposition division in its interlocutory decision."
The Enlarged Board laid down the conditions under which the exception may be made. The board noted that the three conditions laid down by the Enlarged Board are sequential. Further, the board noted that in claim 1 of the second auxiliary request features had been added which also involved some relationships between the four elements of the system. In the board's opinion, each of the requirements lost by deleting the inadmissible amendment has to be considered together with the added features in the light of the conditions established in G 1/99. The board came to the conclusion that the amendments fell within the conditions for an allowable exception under G 1/99, allowing the deletion of the former inadmissible amendments, and were therefore allowable.
4. Late-filed submissions in appeal proceedings
In T 2054/11 the opponent (appellant) had produced an extract from a textbook for students of mechanical engineering only four days before the oral proceedings, asserting that it had only just been able to obtain it, that its content was easy to grasp and that it was highly relevant for deciding whether claim 1 as maintained was inventive. The board, however, could not see how its extremely late production, six years after the opposition had been filed, could possibly be justified by the time needed to find a textbook. It would anyway be unreasonable and unfair at this stage to expect either the proprietor (appellant) or the board to deal appropriately with the late-filed extract during the oral proceedings. The proprietor had understandably considered filing additional auxiliary requests, but this would most likely have meant adjourning the oral proceedings because it would have been impossible to discuss the situation arising from such new requests within the time available. As to the argument that the extract was highly relevant, the board observed that, once oral proceedings on appeal had been arranged, and especially just before or during those proceedings, whether or not late-filed amendments to a party's case could be considered no longer depended in practice on whether they were relevant (see Art. 13(3) RPBA). Accordingly, the board could see no reason to admit the extract.
In T 2471/13 the prior art document filed with the statement of grounds and objections based thereon could and should have been filed in first-instance proceedings. The board decided not to admit the document into the proceedings, irrespective of its potential relevance (Art. 114(2) EPC and Art. 12(4) RPBA).
In T 340/12 the board admitted the late-filed document into the proceedings and stated that in this case the prima facie high relevance of the document should take precedence over the procedural aspect of its late filing.
4.2 Article 12(4) RPBA – general principles
In T 1873/11 the board rejected the appellant's contention that the use of "power" in Art. 12(4) RPBA (as opposed to "discretion" in Art. 13(1) RPBA) prevented it from taking a decision at its discretion. Rather, "power" implied the very ability to decide not to admit requests, etc. in certain circumstances specified in the RPBA, even if any such refusal to admit them naturally had to be supported by reasons. All that could be inferred from "power" was that the board was under no obligation to refuse admission even where the conditions set out in Art. 12(4) RPBA were met. The board therefore took the view – in line with the boards' case law – that it had discretion to decide on the matter.
4.3 Communication of a board of appeal
The purpose of a communication of a board of appeal pursuant to Art. 15(1) RPBA is to prepare the oral proceedings; it is not an invitation to the parties to make further submissions or to file further requests (T 1459/11).
4.4 Unsubstantiated requests
In some decisions, it has been observed that unsubstantiated auxiliary requests cannot be considered in appeal proceedings.
Under Art. 12(2) RPBA, the statement of grounds of appeal and the reply must set out the parties' complete case. In particular, it must be set out why it is requested that the decision under appeal be amended or upheld. Taken as a whole, the RPBA make it clear that appeal proceedings are primarily written in nature, with Art. 12(2) RPBA requiring that the parties' complete case be submitted at the outset. The purpose of this provision is to ensure fair proceedings for all concerned and to enable the board to start working on the case on the basis of both parties' complete submissions. In inter partes proceedings, both rights and obligations should be divided equally among the parties so that the board can perform its independent judicial function (T 217/10, T 1890/09).
In T 217/10 the board observed that it was not only for the appellant to substantiate its appeal but equally for the respondent to show at an early stage why it considered that the objections raised in the grounds of appeal did not withstand scrutiny. If auxiliary requests were submitted, reasons usually had to be given to explain how they overcame those objections (at least if this was not obvious from the amendments made). In the case in question, the auxiliary requests had not been accompanied by any reasons, so it was not immediately apparent to the board how they could overcome the objections raised. The board therefore refused to consider them.
In T 1784/14 the board summarised in its catchword that if no substantiation is provided, at any stage during the appeal proceedings, for claim amendments which are not self-explanatory, the requests containing those amendments may be considered not validly filed (following T 1732/10). In T 2288/12 the board confirmed that requests that are not self-explanatory become effective only at the date on which they are substantiated.
In T 2355/14 the board observed that auxiliary requests filed by proprietors with their statement of grounds of appeal or reply could not be admitted if they neglected also to specify why the contested decision should be amended or the patent maintained (see Art. 12(2) RPBA in conjunction with Art. 12(4) RPBA).
In T 100/13 a proprietor had filed divergent auxiliary requests addressing a variety of points at a very late stage in the proceedings, namely after the oral proceedings had been arranged, without stating why they should be allowed over the cited prior art. The board found that, in these circumstances, neither it nor the other party could reasonably be expected to discuss their patentability for the first time at the oral proceedings. It was up to the proprietor as respondent to show in its reply to the statement of grounds for appeal why those grounds were wrong or how amending the main or auxiliary requests could overcome the objections raised and thereby enable the thus amended claims to be taken as a basis for maintaining the patent in limited form. Where, as in the case in hand, auxiliary requests had been filed at a very late stage, it could be expected all the more that adequate reasons to support the contention that the claims were patentable over the prior art would be provided. It was true that the requests (1 to 12) at issue did not introduce any new facts or create a new case, and were simple, or at least not especially complex, but the proprietor had nevertheless failed to substantiate its view that they constituted an allowable set of claims. The board therefore refused to admit them and, in the absence of any allowable request, revoked the patent.
In T 1533/13 the board had to deal with the admissibility of late-filed claim requests which were filed roughly one month prior to the oral proceedings. These requests were based on claim requests already filed without explanation with the statement of grounds of appeal. The board stated that the appellant had filed ten auxiliary requests with the statement of grounds of appeal, containing various parameters, and had provided no explanation at all in the statement of grounds of appeal as to why all these parameters had been introduced and which of the opposition division's objections was therefore overcome. The mere filing of amended claims did not exonerate the appellant from the task of expressly specifying in the statement of grounds of appeal the relevance of the amendments for overcoming the objections on which the decision under appeal was based (T 933/09). This requirement ensured that the board and the other party were in a position to understand the reasons why the decision was alleged to be incorrect.
4.5 Amendments after arrangement of the oral proceedings
In T 416/12 the board summarised an approach frequently adopted by the boards when exercising their discretion in admitting amendments filed shortly before or in the course of oral proceedings as follows: unless good reasons exist for filing amendments so far into the procedure – this may be the case when amendments are occasioned by developments during the proceedings – they are only admitted at such a late stage if they are clearly or obviously allowable. This means that it must be immediately apparent to the board, with little or no investigative effort on its part, that amendments successfully address the issues raised without giving rise to new ones (see T 87/05).
4.6 Discretion of the boards to admit requests already refused by the department of first instance
In T 182/12 the appellant had asked the board in its statement of grounds for appeal to maintain its patent on the basis of a request comprising claims identical to those filed, but not admitted, as an auxiliary request during the oral proceedings before the opposition division. Noting that Art. 12(4) RPBA gave it the power to hold such a request inadmissible, the board cited the case law on reviewing discretionary decisions taken at first instance, according to which the boards should "only overrule the way in which a department of first instance has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles, or that it has exercised its discretion in an unreasonable way". The board found that, in deciding not to admit the auxiliary request, the opposition division had applied the right criteria and exercised its discretion reasonably. The appellant's failure to file it earlier had been at least partly a procedural tactic and in any event not justified by an unexpected turn of events. The board therefore saw no reason to overrule the opposition division's exercise of discretion and concluded that, since it too could not admit the appellant's sole request, the appeal had to be dismissed.
In T 971/11 the opponent (appellant) filed document B1 two days before the oral proceedings before the opposition division, which did not admit it into the proceedings. The board stated that the opposition division had based its discretionary decision on the principles established by the jurisprudence and had not acted in an unreasonable way. Together with its statement of grounds of appeal, the appellant re-submitted document B1. The board considered whether it had discretion to admit a document which was not admitted in the first-instance proceedings. According to Art. 12(4) RPBA the non-admission of a document which was not admitted in the first-instance proceedings into the appeal proceedings is at the discretion of the board. The board referred to the established case law, according to which a filing made with the statement of grounds of appeal should not be considered inadmissible if it is an appropriate and immediate reaction to developments in the previous proceedings, such that the appellant who lost the opposition proceedings is thereby given the opportunity to fill the gaps in its arguments by presenting further evidence on appeal. Where an appellant challenges a finding in the impugned decision concerning the non-admission of a document by bringing forward further related submissions, the board must establish whether these submissions can be considered an appropriate and immediate reaction to developments in the first-instance proceedings and to this aspect of the appealed decision. The board may be now confronted with additional facts and different circumstances. The board has to exercise its discretion under Art. 12(4) RPBA independently, giving due consideration to the appellant's additional submissions. In the judgement of the board, a document which would have been admitted into appeal proceedings if it had been filed for the first time at the outset of those proceedings should not, however, be held inadmissible for the sole reason that it was already filed before the department of first instance (and not admitted). To impose such a limitation on the discretion conferred by Art. 12(4) RPBA could even have the undesirable effect of encouraging a party to hold back a document during the opposition proceedings, only to present it at the appeal stage (cf. T 876/05). The fact that the opponent had already filed document B1, on its own initiative, shortly before the oral proceedings so that this document could possibly be considered by the department of first instance, instead of holding it back in order to submit it only at the appeal stage, was neither detrimental to procedural economy nor a disadvantage to the respondent (or the board) and was thus not to be held against the appellant under Art. 12(4) RPBA. The board concluded that the document was not to be held inadmissible under Art. 12(4) RPBA (see also T 490/13).
In T 820/14 the board had to decide whether it could and should admit an auxiliary request not admitted by the examining division but resubmitted on appeal. It observed that, so long as departments of first instance had exercised their discretion properly, the boards as a rule should not overrule their decisions and substitute their own discretion for that exercised at first instance. That applied regardless of whether not they ultimately decided to admit the previously refused submissions, uphold the refusal to admit them on different grounds or remit the case to the department of first instance and give it an opportunity to exercise its discretion anew.
By the same token, however, the case law established in G 7/93 (OJ 1994, 775) could not be interpreted as imposing on the boards any duty to uphold a proper exercise of discretion at first instance, particularly as it merely issued a recommendation ("a board of appeal should ..."). The board found that it had its own margin of discretion to decide whether or not to admit on appeal a request refused at first instance, and was, in essence, free to exercise that discretion irrespective of how the department of first instance had exercised its (in line with T 971/11; see above). Indeed, to find otherwise would result in an undesirable restriction on the boards' powers of review. It would mean, for instance, that examining divisions, simply by deciding not to admit claims on the ground that they were prima facie deficient, rather than first admitting them and then refusing to grant them on the merits on the basis of the same deficiency, could prevent the boards from taking a second look at the substance of their refusal to admit them and, if need be, reaching a different conclusion.
In T 1286/14 the board addressed the limited scope for reviewing exercises of discretion to refuse a "fresh ground for opposition" where the proprietor objects to its admission on appeal. In the case at issue, the opposition division had considered the late-filed ground irrelevant and refused to admit it. On its resubmission in the statement of grounds for appeal, the board regarded it as a "fresh ground for opposition" within the meaning of G 10/91 (OJ 1993, 420), as interpreted in G 1/95 (OJ 1996, 615), and, since the proprietor (respondent) had expressly refused to consent to its admission on appeal, declared it inadmissible. In such circumstances, it was sufficient for the board to establish that there was evidence that the opposition division had actually examined whether the ground was prima facie relevant and given reasons for its finding on this. Contrary to what had been held in the obsolete decision T 986/93 (see point 2.6 of the Reasons), there was no need for it also to review whether that finding was correct. In other words, the board's duty to review the exercise of discretion was limited. Citing G 10/91 (point 18 of the Reasons), it thus refrained from examining the substance of the fresh ground.
In concluding that, where a proprietor objects to a "fresh ground for opposition" on appeal, there is only limited scope for reviewing the department of first instance's exercise of its discretion in deciding whether to admit it, the board followed the approach taken in T 736/95 (point 5 of the Reasons), T 1519/08 (point 3.3 of the Reasons) and T 1592/09 (point 2.6 of the Reasons) and rejected that entailing a thorough review of the earlier exercise of discretion on its merits, as taken in e.g. T 1053/05 (points 3 to 17 of the Reasons), T 1142/09 (point 1.5.1 of the Reasons) and - based chiefly on T 986/93 - T 620/08 (point 3.4 to 3.7 of the Reasons).
4.7 Late-filed arguments
During the oral proceedings in case T 55/11, when discussing inventive step of granted claims 1 and 20 starting from document D1 and taking into account document D13, appellant I (opponent I) argued for the first time that the subject-matter of said claims also lacked an inventive step starting from document D13 and taking into account document D1. In deciding whether a new argument has the effect of amending a party's case within the meaning of Art. 13(1) RPBA the board considered whether the new argument was a departure from, or just a development of, the original arguments (see T 1621/09). In the case at hand, the new argument could not be seen as merely a further development or elaboration of appellant I's previous position. The new analysis was based on a different choice of closest prior art (document D13 instead of document D1), and this in turn meant that, compared to the previous argument, it was necessary to consider different reasons (based now on document D13) as to why the skilled person would find it obvious to arrive at the distinguishing features having regard to the prior art. The board decided to admit the new arguments for the following reasons. In its communication the board had indicated that inventive step based upon D1 in combination with D13 might be discussed at the oral proceedings, and hence appellant II (patent proprietor) could have foreseen that the argument which appellant I (opponent I) was now relying on might well become a subject for discussion. Documents D1 and D13 had both been before the opposition division and had been extensively discussed throughout the proceedings.
4.8 Documents and evidence admitted
(CLB, IV.C.1.3.14 c))
In T 1830/11 the board admitted evidence produced with the statement of grounds of appeal. It found that there were no provisions in the EPC which obliged the opponent to provide evidence against every possible fallback position defined in the dependent claims. Thus when amendments were made to the claims during oral proceedings before the opposition division (as in the case at issue, claim 1 having been amended to include the features of a dependent claim in the patent as granted), the requirement under Art. 114(2) EPC that evidence be submitted "in due time" might, depending on the circumstances, arise only when the statement of grounds of appeal was filed.
4.9 New submissions in proceedings resumed before the boards
In review case R 16/13 the Enlarged Board set the contested decision aside and ordered that the proceedings (in T 379/10) be resumed. On doing so, the board held that such resumptions of appeal proceedings were confined to rectifying the defect identified on review. The appellant took the view that filing comparative tests was an essential part of the comments that R 16/13 had allowed it to make. But the newly filed tests raised an admissibility issue: whether they merely helped the appellant to overcome the board's objection – which R 16/13 had said it could comment on – or whether they went further and would thus extend the subject-matter of the resumed proceedings beyond that specified in the petition for review decided on in R 16/13. The board held that the new tests and line of argument would indeed extend the subject matter, and therefore declined to admit them into the resumed proceedings.
4.10 Continuation of the appeal proceedings after the end of oral proceedings
In T 577/11 the board stated that continuation of the appeal proceedings after the end of oral proceedings is not, as such, a reason for admitting new submissions or additional evidence relating to issues which were not admitted at the first oral proceedings or in respect of which the debate had indeed been closed. In the board's view, presenting a party's case little by little, depending on the further evolution of the case, is not in line with the principle of procedural economy.
5. Termination of appeal proceedings
5.1 Conditional withdrawal of appeal
In T 1402/13 the board pointed out that procedural declarations may be made with the proviso that certain conditions are met, as long as a case is already pending (J 16/94, referring to Art. 108, first sentence, and R. 64(b) EPC 1973; T 854/02) and these conditions do not concern facts outside the proceedings (T 502/02). Thus, whereas a conditional appeal is not possible, the conditional withdrawal of an appeal may be valid (T 6/92, T 304/99). The withdrawal of an appeal can, though, only take effect if the appeal is still pending. In the case at issue, since the renewal fee in question was not paid in due time, the application was deemed to be withdrawn in accordance with Art. 86(1), third sentence, EPC. The board noted that a loss of rights also affects the appeal proceedings. Thus, the application was no longer pending and hence the appeal proceedings had also ended due to the loss of rights. Therefore, the declaration regarding the withdrawal of the appeal could not be effective.
6. Remittal to the department of first instance
6.1 Exercise of discretion to remit
In T 985/11 the description as adapted before the opposition division related to subject-matter which was no longer claimed and therefore needed to be further adapted. The board did not share the appellant's view that the board had to revoke the patent for this reason because of the respondent's inability, due to its absence, to provide an adapted description at the oral proceedings. Instead, the board took the view that under Art. 111(1) second sentence EPC, it still had discretion to decide how to precede in this situation. In the case of an allowable appeal, whether and to what extent a board itself deals with any issues arising, i.e. exercises the powers of the department whose decision was appealed, or remits the case to that department for further prosecution, is decided on the merits of the case in point. When taking such decisions, the boards consider various aspects, such as the parties' requests, procedural economy, the parties' interest in having the matter examined by two instances, and the right to fair proceedings (see "Case Law of the Boards of Appeal", 7th ed. 2013, IV.E.7). Considering the available options, the board decided against continuing the appeal proceedings in writing, for reasons of procedural economy. Furthermore, Art. 15(6) RPBA required the boards to ensure that cases are ready for decision at the conclusion of the oral proceedings unless there are special circumstances to the contrary. In the present case, the board could not identify any special circumstances preventing it from taking a decision terminating the appeal proceedings. The additional delay caused by a remittal seemed likely to be fairly short, since the wording of the claims was finalised by the decision, and the proceedings after remittal will thus be confined to adapting the description. As the board was taking a decision on the allowable version of the claims, procedural economy and legal certainty were also served.
6.2 Special reasons for not remitting the case
(CLB, IV.E.7.4.5 b))
According to Art. 11 RPBA, a board must remit a case to the department of first instance if fundamental deficiencies are apparent in the first-instance proceedings, unless special reasons present themselves for doing otherwise. Fundamental deficiencies which may justify the immediate remittal include for example the lack of a reasoned decision (R. 111(2) EPC).
In T 2171/14 the request filed by the appellant (patent proprietor) for remittal of the case to the department of first instance was rejected by the board despite the fundamental deficiencies in the impugned decision. The board pointed out that a remittal would primarily have resulted in a further procedure before the opposition division which could not be expected to change the substance of the issue and would also have considerably prolonged the total duration of the procedure (unhelpful given the ongoing infringement proceedings as well as the request of the appellant (opponent) for acceleration). Further, all the facts and arguments had already been presented in the opposition proceedings and again in the appeal proceedings. In summary, the board found that remittal of the case was not appropriate.
In T 1647/15 the board observed that whereas under normal circumstances a potential suspicion of bias concerning a member of an opposition division might be a strong indication for a remittal, this was not the case here where this suspicion did not affect the whole process of decision-making but only arose out of an uncontrolled outburst at the end of exceptionally long and intense oral proceedings. It pointed put that on a high number of issues, the preliminary conclusions reached by the opposition division before the incident occurred were not tainted by a suspicion of partiality. In the same way, the contested decision dealt in great detail with these issues and was based on reasons which were extensively discussed in oral proceedings before said incident occurred. Thus, the board doubted that a remittal to the department of first instance, even in a different composition, would serve the interests of justice, in the sense that the remittal would likely result in the affair growing further in complexity and would cause an excessive delay in having the case finally decided, also taking into account that these were the second appeal proceedings in the case. Accordingly, the board decided that the case would not be remitted to the opposition division.
6.3 Binding effect of decision remitting case to department of first instance
This was the second appeal (T 2086/13) in relation to the opposition. The outcome of the first appeal was to set aside the decision of the opposition division and remit the case for further prosecution due to a substantive procedural violation, lack of inventive step of the then pending main request, which formed the basis of the decision, not having been sufficiently reasoned. According to the contested decision, the opposition division had made use of its discretion not to admit into the proceedings the ground for opposition under Art. 100(b) EPC, which had been raised after the nine-month opposition period. However, after the remittal, the opposition division admitted said ground into the proceedings, and decided that the claimed invention was not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, and revoked the patent in suit. The appellant then argued that the admission by the opposition division of the ground for opposition under Art. 100(b) EPC represented a procedural violation. Since the sole point found to be deficient by the board in the first appeal was that the lack of inventive step had been decided with insufficient reasoning, the opposition division was only allowed to examine on remittal the question of inventive step and, consequently, not to "reopen" other issues as those had become res judicata. In the opinion of the board, in the first appeal the board had no obligation to consider any other issues for its decision on the finding of a substantial procedural violation, given that the first decision only had a single legal effect (maintenance of the patent in amended form). This single legal effect had to be revoked as soon as one ground against it was found to be well founded, and the deciding board did not err when it did not decide on any other issue. Accordingly, given that the decision only had a single legal effect, it was set aside in its totality. Therefore, during the opposition proceedings following the remittal, none of the decided issues remained, but had to be decided again. The first decision no longer existed, and therefore no longer had any binding effect on the opposition division. In this manner the division was not prevented from examining again the new opposition ground. Accordingly, the appeal was dismissed.
In T 308/14 the board held that if a case is remitted to the opposition division in appeal proceedings, after the board has taken a decision under Art. 84 EPC on the clarity of a certain feature in a claim, this decision is res judicata and thus binding on the opposition division in the subsequently resumed opposition proceedings. The binding effect did not only cover the decision on Art. 84 EPC as such; it also extended to any finding of fact that led to this decision. Therefore, if in the resumed opposition proceedings an insufficiency objection is made under Art. 83 EPC on the basis that this very feature was ambiguous (insufficiency arising out of ambiguity), the opposition division should not reopen the discussion on whether this feature is clear, and should accept any finding of fact that the board made in arriving at its decision on Art. 84 EPC.
7. Reimbursement of appeal fees
In T 823/11 the board held that the length of the proceedings before the examining division had been affected by unacceptable delays, in particular the delay of more than five years between the supplementary European search report and the examining division's first communication, and the delay of more than two years between the applicant's reply to the examining division's third communication and the summons to oral proceedings. The board considered the duration of the proceedings before the department of first instance of more than twelve years after entry into the European phase to be excessive. According to the board, in T 315/03 even a shorter delay of ten years in a much more complex opposition case had amounted to a substantial procedural violation. The board also referred to the judgment of the European Court of Human Rights (ECtHR) in Kristiansen and Tyvik AS v. Norway (application No. 25498/08), in which the examination and (administrative) appeal proceedings of a patent application had taken a total of eighteen years. Taking into account the duration of patent protection of twenty years, the Court had found "the length of the administrative proceedings before the patent authorities" to be excessive because it "in effect rendered meaningless any exercise by them [the applicants] of their right of access to a court". The board concluded that there had been a substantial procedural violation and ordered the reimbursement of the appeal fee.
In T 1824/15 the appellant argued that two different delays in the first-instance proceedings each amounted to a substantial procedural violation under R. 103(1)(a) EPC. One was a delay of over eleven years in raising an inventive-step objection based on a prior-art document (D3), the other a delay of seven months in issuing the written decision and minutes after the oral proceedings. The appellant requested reimbursement of the appeal fee, citing the ECtHR decision in Kristiansen and Tyvik AS v. Norway (application No. 25498/08) and decision T 823/11.
The board commented that in T 823/11 an excessive procedural duration had been found to be a substantial procedural violation. It decided to deviate from this interpretation of the EPC (Art. 20(1) RPBA) and noted that the reasons for decision T 823/11 did not explain why the delays in the examination procedure could not be justified by the particular circumstances of the case. Moreover, T 823/11 did not explain how its reasoning was in line with that of the cited ECtHR decision, in particular why circumstances leading to a finding of a violation under Art. 6(1) ECHR would necessarily lead to a finding of a substantial procedural violation under R. 103(1)(a) EPC.
In the case before it, the board held that the examining division had been entitled to raise the new objection so late in the first-instance proceedings. Members of an examining division were free to change their minds at any point in the procedure, including during oral proceedings, as long as the requirements of Art. 113(1) EPC were fulfilled. The raising of the objection based on D3 had led to neither a fundamental deficiency under Art. 11 RPBA nor a substantial procedural violation.
With regard to the time taken by the examining division to issue the written decision and the minutes, the board noted that, in the past, boards of appeal had found that long delays between oral proceedings and the issuing of the written decision could constitute a substantial procedural violation. However, the board was unaware of any decision in which a delay such as the one at issue had been found to be a substantial procedural violation. In view of the above, and particularly because the EPC did not specify how soon after oral proceedings the written decision and minutes are to be issued, the board found that the delay of seven months was not a procedural violation of any sort, let alone a substantial one, and also not a fundamental deficiency under Art. 11 RPBA. The request for reimbursement of the appeal fee was therefore rejected.
In T 1325/15 the board addressed the question whether an appeal had to be found inadmissible or deemed not to have been filed if the notice of appeal was filed, and the appeal fee paid, only after expiry of the time limit for filing the notice of appeal (see also T 2017/12, OJ 2014, A76, and T 1553/13, OJ 2014, A84).
According to the board, numerous provisions of the EPC specified that a certain document had to be filed within a particular time period or "in due time". In almost all cases, the EPC specified the legal consequence of not filing the document "in due time" without, however, distinguishing between late filing and non-filing. In a few cases the timely filing of the document was a condition for a certain provision to be triggered and the consequence of both late filing and non-filing was simply that the provision was not triggered. For example, if an applicant did not file the supporting certificate referred to in Art. 55(2) EPC within four months of filing the application (R. 25 EPC), it could not benefit from Art. 55(1) EPC. Another instance was the filing of a request for a decision on a loss of rights under R. 112(2) EPC. Thus, the general rule was that the late filing of a document was treated in the same way as its non-filing (a possible exception being the special case of the priority period of Art. 87(1) EPC).
Art. 108, first sentence, EPC required that notice of appeal be filed within two months of notification of the decision. If no notice of appeal was filed, no appeal came into existence. Although the position that R. 101(1) EPC meant that a late-filed notice of appeal brought into existence an inadmissible appeal might be not unreasonable, the board considered, in view of the general rule that no distinction was to be made between the late filing and the non-filing of a document, that no appeal existed where a notice of appeal was not (deemed to be) filed in due time.
The board noted that its approach, although not always consistently applied in the jurisprudence of the boards of appeal, was also in line with the reasoning in earlier decisions that an appeal was deemed not to have been filed where the appeal fee had been paid in time but the notice of appeal had been filed only after expiry of the two-month period of Art. 108(1) EPC (see in particular J 19/90, points 1.2.2 and 4 of the Reasons; T 445/98, points 1.2, 5, 6 and 7 of the Reasons; and T 778/00, OJ 2001, 554, point 6 of the Reasons).
E. Proceedings before the Enlarged Board of Appeal
In G 1/14 the Enlarged Board held that it is primarily up to the board referring a point of law to explain why it believes it needs an Enlarged Board ruling on the point arising in the case before it. This is also clear from Art. 22(2), second sentence, RPBA, requiring the referring board to state the context in which the point originated. In any event, the Enlarged Board must examine whether the referral fulfils the criteria of Art. 112(1)(a) EPC (including that a "decision is required") and is thus admissible. But if the referral is clearly the result of misapplying the law, and on a correct application an answer from the Enlarged Board is no longer necessary for the decision in the appeal proceedings, it is to be dismissed as inadmissible.
The question referred to the Enlarged Board in this case had arisen in connection with reimbursement of an appeal fee and was whether an appeal is inadmissible or deemed not to have been filed if the notice of appeal is filed and the appeal fee paid after expiry of the time limit. Until 1 April 2015 the wording of R. 126(1) EPC had been limited to "Notification by post ... by registered letter with advice of delivery" (since amended to: "Notification by postal services ... by registered letter with advice of delivery or equivalent"). In the Enlarged Board's view notification of first-instance decisions by the postal service UPS was not covered by R. 126(1) EPC as formerly in force, so the referring board's finding that the appeal had not been lodged in time was inoperative. As this meant there was no need to refer the question, the Enlarged Board dismissed the referral as inadmissible.
In R 19/12 of 12 April 2016, the Enlarged Board ruled that a petition for review can admissibly be limited to that part of a decision that is singled out as allegedly vitiated by a breach of the right to be heard. The legislator had not explicitly provided in Art. 112a(5) and R. 108(3) EPC for setting decisions aside in part only, but that it was possible followed from general principles of procedural law. If a petition for review challenging only part of a decision were granted, it would be unreasonable to set the decision aside in its entirety.
On the fundamental violation of the right to be heard alleged in this case, the Enlarged Board, citing the boards' established case law, observed that, while Art. 113(1) EPC guarantees a party's right to have relevant grounds and arguments fully taken into account in the written decision (R 19/10, point 6.2 of the Reasons; R 23/10, point 2 of the Reasons), this guarantee is not unlimited. The decision-making body is not obliged to address each and every argument of a party (e.g. R 19/10, point 6.2 of the Reasons, citing T 1557/07; R 17/11, point 4 of the Reasons; R 15/12, point 5 (b) of the Reasons), and the extent of its obligation to address arguments depends on the circumstances of the individual case. Although a decision need not deal with every single argument, it must address the crucial disputed points, so as to give the losing party a fair idea of why its submissions were not considered persuasive (T 1969/07, T 1961/13, T 1199/10 and T 698/10). The boards must discuss in their decisions the facts and arguments crucial to the outcome but may disregard any irrelevant ones (R 13/12, point 2.2 of the Reasons). They are not obliged to use specific words or even the same wording as the parties; that arguments had been refuted might have to be inferred from the line of argument in the written reasons for their decision (R 21/10, point 2.4 of the Reasons; R 13/12, point 2.2 of the Reasons). In other words: Art. 113(1) EPC confers on parties a right to be given sufficient opportunity to submit arguments on all crucial aspects of the case and to have the decision-making body note those arguments and assess them in its decision (R 8/11, point 1.2.9 of the Reasons). The Enlarged Board noted that these principles had been reflected in the case law following T 1557/07 (see T 1969/07, T 1961/13, T 1199/10 and T 698/10).
On the petitioner's complaint that the board had failed to give due consideration to arguments as to procedural defects at first instance which it had submitted in support of its request for reimbursement of the appeal fee, the Enlarged Board held that, if the outcome of the opposition proceedings could not have depended on an alleged procedural defect, not addressing that possible defect in the reasons for the decision was not a fundamental violation of the right to be heard.
In the inter partes proceedings under review in R 16/13, the petitioner had filed a document with comparative test results. In its written decision, the board of appeal had found that this document did not prove the advantages of the claimed substance, because it did not specify some of the parameters referred to in the claim.
The Enlarged Board cited the case law established since R 1/08 that the right to be heard does not require that the parties be informed in advance of all conceivable reasons for the decision, and held that this applied equally to possible interpretations of passages in the prior art (R 19/11, point 2.2 of the Reasons; R 15/12, point 5 a of the Reasons). The right to be heard was observed if a party had been given the opportunity to comment on the crucial aspects of the case, including any relevant passages in the prior art, even if the board ultimately had to remain free to draw its own conclusions from the discussion of the party's submissions (R 15/12, point 5 a of the Reasons). This meant that boards could base their decisions only on reasons which had been touched on during the appeal proceedings and, therefore, could not have taken the parties by surprise (R 15/09, point 4.6 of the Reasons; R 21/10, point 2.3 of the Reasons; R 3/13, points 2.2 and 2.6 of the Reasons).
In the case at issue, the board had based its decision to deny patentability on reasons it had considered of its own motion without having afforded the proprietor an opportunity to comment and, if necessary, file new requests. Since the proprietor could not, based on its own expertise, have deduced what line of argument the board would follow from the course of the proceedings, the board ought to have indicated its take on the comparative tests during the oral proceedings at the latest. Its failure to do so had affected the outcome (patent maintained, but only in limited form) and so amounted to a fundamental violation of the proprietor's right to be heard (Art. 112a(2)(c) and 113(1) EPC).
The Enlarged Board set the contested decision aside and ordered re-opening of the proceedings.
In R 2/14 the Enlarged Board stated that the right to be heard according to Art. 113(1) EPC is an important procedural right intended to ensure that no party is caught unawares, in a decision turning down its request, by grounds and evidence on which it has not had an opportunity to comment (R 3/10, point 2.10 of the Reasons; J 7/82, OJ 1982, 391, point 6 of the Reasons). This requirement includes the party's right to have the relevant submissions and arguments considered and fully taken into account in the written decision in a manner that enables it to understand, on an objective basis, the reasons for the decision (see R 19/10, points 6.2 and 6.3 of the Reasons; R 23/10, point 2 of the Reasons; R 8/11, point 1.2.9 of the Reasons; R 17/11, point 4 of the Reasons; R 15/12, point 5 b) of the Reasons; R 13/12, point 2.2 of the Reasons; R 19/12 of 12 April 2016, points 6.1 and 6.2 of the Reasons).
In the case in hand, the Enlarged Board noted that the board's decisive line of argument had concerned the aspect of modifying the inactive SEQ ID NO: 4 by means of recloning the desaturase, starting from E. gracilis. The reasons given by the board were limited in so far as, after establishing the need for recloning, it had immediately stated its conclusion that, although the skilled person could in fact perform each of the necessary steps, combining those steps created an undue burden for him. The other two alternative approaches relied upon by the petitioner had not been discussed at all by the board; they had merely been referred to as suffering from the same negative conclusion as the recloning approach. The case in hand was thus marked by the circumstance that the board had mentioned neither facts nor a sequence of arguments that had led it to the conclusion that the combination of the required steps imposed an undue burden on the skilled person. The summary of facts and submissions in the decision under review was also silent in this respect.
Therefore, the conclusion drawn by the board could not be understood and reproduced by the affected party. The Enlarged Board set the decision under review aside, reopened the proceedings and ordered reimbursement of the petition fee.
According to the Enlarged Board in R 8/15, Art. 113(1) EPC implies that decisions of the EPO boards of appeal should adequately state the reasons on which they are based in order to show that the parties were heard. A party must be able to examine whether, in its view, the board has afforded it the right to be heard in order to be in a position to decide whether or not to file a petition under Art. 112a(2)(c) EPC for violation of Art. 113(1) EPC. One aspect of the right to be heard as covered by Art. 113(1) EPC requires a board to consider a party's submissions, i.e. assess the facts, evidence and arguments submitted as to their relevance and correctness. Art. 113(1) EPC is infringed if the board does not address submissions that, in its view, are relevant for the decision in a manner adequate to show that the parties were heard on them, i.e. that the board substantively considered those submissions.
Assessing the completeness of a decision would usually be beyond the scope of scrutiny under Art. 113(1) EPC. As to the reasons for a decision, Art. 113(1) EPC must be interpreted more narrowly than, and thus is not a substitute in review proceedings for, the broader legal provisions embodied in R. 102(g) EPC. Those provisions require a board to give reasons for its decision, but infringement thereof is not as such a ground for review. In other words: for the purpose of compliance with the right to be heard, reasons may be incomplete, but as long as they permit the conclusion that the board, in the course of the appeal proceedings, substantively assessed a certain point that had been raised in those proceedings and that it found it to be relevant, there will be no violation of Art. 113(1) EPC.
In the case before it, the Enlarged Board concluded that the board's reasons for combining two prior art documents might be incomplete, but they supported the conclusion that it had substantively assessed this combination. For the purposes of the right to be heard, the reasons were therefore adequate. The petition was rejected as clearly unallowable.
V. DISCIPLINARY BOARD OF APPEAL
1. Marking of Paper C
Paper C of the European qualifying examination tests candidates' ability to draft a reasoned notice of opposition (see R. 25 IPREE). On the marking of this paper, the board in D 11/14 observed that, even where a complete answer had been given, R. 25(5) IPREE did not rule out downmarking candidates who, in an attempt to avoid losing marks, had dealt with as many grounds of opposition as possible, including ones based on unconvincing reasons, so that it was ultimately left to the Examination Committee to pick out the valid ones. Candidates producing a notice of opposition that included several poorly substantiated grounds did not display the requisite skill in judging what grounds were relevant for a successful opposition.
The board in D 1/15 considered that the settled jurisprudence (see e.g. D 1/92, D 6/92, D 7/05) also applied to appeals on the pre-examination, even if the marking was hardly ever in dispute, given the simple marking scheme of a multiple-choice test. However, the review requested in this case was not directed at the marking but at the content of the examination as presented to the candidates. To decide on the issues, the board would have had to review at least a substantial part of the paper and perform a detailed, partly technical analysis of the facts presented. This exercise appeared to be well beyond the powers of the board. See also e.g. D 6/16.
In several appeal decisions on the 2016 pre-examination, statement 5.4 (in the German version of the paper) was held to have been unclear and confusing. In some cases (see e.g. D 1/16, D 4/16, D 15/16), the additional points awarded resulted in the candidate achieving the "PASS" grade. Challenges to other statements in the same paper were, however, rejected (see e.g. D 5/16, D 6/16, D 10/16). In D 5/16 the board concluded with some general remarks, as follows. It was essential to ensure that the questions to be answered and any statements to be evaluated in a multiple-choice examination such as the EQE pre-examination were formulated clearly and unambiguously. Given that pre-examination candidates could not give any reasons for a "True" or "False" answer, and that acceptable alternative answers could not be considered, it was crucial to formulate statements in such a way that clearly only one "True" or "False" answer was possible and "correct" in the circumstances (see also D 6/16). At the same time, however, the board observed, with regard to the ambiguity of words and the relevance of the factual context of questions, that if a question was logical and made sense, so that, using common sense, it was clear what answer was expected, candidates could not rely on exceptions to the rule or explore alternative interpretations with a view to showing that a different answer might also be conceivable in specific instances.
Date retrieved: 19 May 2021