Tuesday, 16 January 2018

T 2450/16 - Relying on guidance from epoline

Screenshot of epoline at its introduction in 2000

This case concerns the request of re-establishment of rights under Article 122 EPC in respect of the period for filing the notice of appeal against the decision of the Examining Division to refuse a European patent application.

The applicant's instructions to file an appeal were transmitted to the administrative assistant in charge of the present file. The assistant was, however, confronted with completing this task in epoline, which according to the applicant/appellant contained no clear indications concerning the initiation of an appeal procedure, apart from the payment of the appeal fee.

The assistant thus did not find any guidance for filing an appeal other than payment of the appeal fee. In paying the appeal fee, the assistent went ahead firmly but wrongly believing from epoline that this was all that was necessary. She therefore wrongly found it superfluous to consult another administrative assistant or an attorney/engineer. According to the applicant/appellant, this constituted the isolated mistake that had occurred in the present case.

As one may expect, the Board however finds that it would have been the responsibility of the representative in the circumstances to give specific and clear instructions on the filing of an appeal to the assistant.

Wednesday, 10 January 2018

T 796/12 - Appeal of opponent which is no longer registered as company

They may not really exist...., but they are coming for you
Is the appeal of an opponent valid, if the company that filed the appeal is no longer registered as a company? 
The patent proprietor argues that the appeal is inadmissable either because the opponent was no longer registered at the date the appeal was filed, or because the opponent was subsequently taken over by a different entity without this change having been notified.
The Board refers to national law, and concludes that German law does not preclude a company which is no longer registered from appealing an opposition decision, even as  opponent. 

Wednesday, 20 December 2017

G 1/16 - The final word (?) about disclaimers

The referral relates to the allowability of undisclosed disclaimers. The referring Board asked about the applicability of the gold standard disclosure test as defined in decision G 2/10 to undisclosed disclaimers (no), and the applicability of criteria as defined in decisions G 1/03 and G 2/03 (yes). The decision G 1/16 (Disclaimers III) noted that in drafting of undisclosed disclaimers as amendments, no technical contribution to the claimed subject-matter of the application as filed may be provided. 

Saturday, 9 December 2017

T 428/13 - Proving an oral disclosure

Not enough proof

This opponent tried to prove that Claim 1 of the main request had been orally disclosed.  The submitted proof included: the power point slides that were used in the presentation, an affidavit of the presenter, the colloquium report of the conference and the article on which the presentation was based (the latter two being published after the effective date). Unfortunately for the opponent it is not enough for the Board.
Reasons for the Decision 
3. Novelty
3.1 Novelty in view of D7 supported by D8 to D10
3.1.1 The oral disclosure D7 of Mr. Altena took place at the 57th Hardening Colloquium on 10. October 2001.
In the Affidavit D8, Mr. Altena describes what in his view has been presented at the conference by referring to Annex A1 (power point slides, which allegedly had been shown during the conference) and Annex A2 (representing preparation notes which allegedly reproduce the content of the talk held by Mr. Altena).
3.1.2 Concerning the content of an oral disclosure it is generally accepted case law, that a single declaration of the presenter of a lecture does not give sufficient proof of the content which has been disclosed orally or has been presented on slides prepared for the lecture (Case Law of the Boards of Appeal, Chapter I.C.3.2.2, see in particular T1212/97).
Following this generally accepted principle, the Affidavit of Mr. Altena (D8) on its own is not sufficient to give proof what had actually been disclosed orally when presenting the slides of Annex A1.
D9 and D10, which are a publication and a colloquium report on the same topic as the presentation D7, demonstrate that the content of the presentation of Mr. Altena was open to the public and that the presentation had taken place. However, these documents alone are not evidence of what had been disclosed orally. Furthermore, they are not prior art under Article 54(2) EPC themselves, since they have not been disclosed before the filing date of the contested patent.
Therefore it has not been demonstrated by the appellant to a sufficient standard what was orally made available to the public during the 57th Hardening Colloquium.
3.1.3 Thus, the Board concludes that it has not been shown that the subject-matter of claim 1 of the main request was orally made available at the conference in 2001.

This decision T 0428/13 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2017:T042813.20170919. The file wrapper can be found here. Photo by Noupload obtained via PixaBay under a CC0 license (no changes made).

Tuesday, 5 December 2017

J 3/17 - Buggy monitoring system

A (Lego) bug...

In the present case, a PCT patent application was filed after expiry of the 12m priority period at the Chinese PCT receiving office by an Chinese agent acting as representative of the appellant.

The appellant filed a request for restoration of the right to priority with the European Patent Office as designated Office, which was refused by decision of the Receiving Section (whereas the request was submitted to and granted by the Chinese PCT receiving office under the 'unintentional' criterion).

The appellant now appeals before the EPO, and argues that 'all due care' has been taken.

Of interest in this case was that because of a bug that had up to then never been discovered, the electronic system which was used by the Chinese agent had given a reminder of the filing date only, not the priority deadline date. Unfortunately (for the appellant, but also for the interested reader), the appeal failed already on other reasons for not satisfying 'all due care', without going into detail on the implications of 'buggy' software wreaking havoc with otherwise carefully defined procedures.

Wednesday, 29 November 2017

T 1332/12 - Admission of corrected translation of prior art in opposition appeal

The opposition division decided that the subject-matter of claim 1 of the main, first, second and third auxiliary requests lacked inventive step over the disclosure of document D7 (JP 07-131734 A) and the common general knowledge of the person skilled in the art (Articles 56 and 100(a) EPC). For the analysis of inventive step, the opposition division referred to document D7T, which was a JPO machine translation of document D7 into English. The patent proprietor (appellant) filed an appeal against this decision and requested that the decision be set aside. In the statement of grounds of appeal, it requested that the patent be maintained in amended form. It submitted arguments as to why the subject-matter of claim 1 of each of the requests met the requirements of Article 56 EPC. With a letter dated 12 October 2015, the appellant submitted a different translation of document D7 (D7JPO) because "the Japanese and the original and the previously translated prior art document D7T is not precise in many aspects". In a communication under Article 15(1) RPBA, annexed to the summons to oral proceedings, the board indicated that it tended to agree with the opposition division's finding that the then second and third auxiliary requests lacked inventive step. It also indicated that it had to be discussed whether translation D7JPO should be admitted into the appeal proceedings (Article 13(1) RPBA).

Monday, 27 November 2017

T 782/16 Can the content of a divisional be derived from an omnibus parent?

In this opposition appeal the Board had to assess if the opposed claims could be derived from the filed divisional and parent. In the Board's view, the "gold" standard for the assessment of Articles 123(2) and 76(1) EPC requires that the subject-matter of an amended claim (or of a claim of a divisional application) be based only on what the skilled person would directly and unambiguously derive from the application as originally filed (or from the earlier application; see G 2/10). For a correct application of this standard, a distinction needs to be made between subject-matter which is disclosed either implicitly or explicitly in the original (or earlier) application and therefore can be directly derived from it, and subject-matter which is the result of an intellectual process, in particular a complex one, carried out on what is disclosed. The Board concluded that the latter was the case.