Friday, 21 October 2016

T 2346/12 - Defined by flex modulus

In this opposition appeal, the appellant (patent proprietor) lodged an appeal against the decision revoking European patent No. 1 773 675.

In the appealed decision, the opposition division found that neither the main request (patent as granted) nor the auxiliary request met the requirements of Article 83 EPC.

Of particular interest in this case is that claim 1 defines a closure for sealing a container (...) characterised in that the outer wall surface (10) at the first wall edge (22) has a flex modulus of less than 3.95 N/mm", i.e., a characterisation by parameter.

This case shows the pitfalls of such type of characterization.

Namely, as argued by the\respondent (opponent), in the patent in suit apparently a new method for determining the flexibility with the new parameter "flex modulus" was developed, however without providing the adequate level of information for its implementation. 

Tuesday, 18 October 2016

T 1679/10 - Anticipation of amendments to claims

The leading principles for what subject matter must be searched "on the basis of the claims, with due regard to the description and any drawings" in accordance with Art. 92 EPC (here Art. 92(1) EPC 1973) is summarized as follows in the B-III 3.5 of the Guidelines:

"In principle, and insofar as possible and reasonable, the search should cover the entire subject-matter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended [...]."

This decision clarifies that in the case of a very broad independent claim, the search division cannot be expected to have searched all possible amendments of this claim, unless the dependent claims or the description provides a direction of expected amendments. This decision will be incorporated in B-III 3.5 of the Guidelines as of November 2016.

Friday, 14 October 2016

T 497/11: Revert an amendment after 9 years

In this opposition appeal admissibility is initially an important subject of the discussion. About one month before the oral proceedings (2016) the Appellants filed amended claims which would, according to the Board, "effectively revert to the method claims they had filed in 2007". The amendment comprises the deletion of "by using a computer".
When reading also the inventive step discussion of one of the requests, it seems that the Appellants would like to delete this features from the claims to enforce the choice of the closest prior art into another direction. The selected closest prior art was generic prior art in the field of air traffic control: "A system including a processor, memory, display and input device, for an aviation system, the system further comprising means (e.g. radio) for communicating to said aircraft."
If this amendment is accepted, the board had to start a discussion of the technicality of the claims. One of the arguments of the Appellants was that the recently filed claims were filed because the representation of the Appellants changed. Is that argument enough to get the amendments into the procedure?
This decision is also interesting because a number of features of auxiliary requests are considered to be a mere automation of mental acts, for example, performed by a flight controller. Thus, although the claims are technical with the feature of "by using a computer", most features do not contribute to the inventiveness of the claims because they are not technical.

Tuesday, 11 October 2016

T 1647/15 - The eyes of an objective observer

In this opposition appeal, three opponents requested that the Opposition Division's decision  be set aside for bias of at least one member of the Opposition Division and that the case be remitted for rehearing before an Opposition Division in a different composition or, in the alternative, that at least one of the questions the Opponents be referred to the Enlarged Board of Appeal, or that the Opposition Division's decision be set aside for violation of the right to be heard and that the case be remitted to the Opposition Division, or that the Opposition Division's decision be set aside insofar as the Opponents are adversely affected and that patent be revoked. A first indication of the alleged partiality was that the representative of Opponent III, on the second day of the oral proceedings, was interrupted by the chairman saying: "Shut your mouth" and "Don't speak any more". The chairman, being asked whether he would confirm this wording, expressed that he would neither regret what he just said, nor "take anything back". The opponents submitted that tis was a clear indication of a personal aversion of the chairman against the representative of Opponent III, and that it was also obvious that this personal animosity negatively affected the ability of the chairman to hear Opponent III with an objective judicial mind. According to the opponents, the Opposition Division made a fundamental procedural violation in deciding itself to reject the then raised objection of suspected partiality by Opponent III. The provisions of Article 24(3) EPC should have been applied to the members of the Opposition Division. The refusal of the Opposition Division to agree to the correction of the minutes of the oral proceedings requested by the Opponents was submitted to be a further indication of partiality. The minutes were deliberately written so as to misinterpret what had happened and was said during the oral proceedings. What did the Board decide?

Thursday, 6 October 2016

T 971/11 - Too late for first instance but admissible in appeal

After you missed the first train, can you catch the next?
The opponent filed a document B1 just before the first-instance oral proceedings. The opposition division considered the document late and not prima-facie relevant. The document was not admitted into the proceedings. The document is again submitted with the statement of the grounds. 
On the one hand the appeal board should only verify that the opposition division's decision not to admit the document was not unreasonable. On the other hand, they need to make up their own mind when the document is presented with the appeal? The board discusses this dilemma, and in the end does not hold it against B1 that is was already rejected by the opposition division. B1 is admitted into the appeal procedure. Another new document that was filed just before the oral proceedings in appeal was not admitted.

Sunday, 2 October 2016

T 1242/06 - Tomatoes III

After two referrals to the EBoA underlying G 1/08 and G 2/12 
settling the Art. 53(b) issues relevant for the present case, the Opposition Appeal proceedings regarding the “Tomato” patent have reached their end: The patent is maintained in amended form with two claims relating to the Tomato fruit itself but no claims to the method of their production. The maintained claims are the claims of Auxiliary request I discussed in the below (highlighted in red and bolded). Depositing of the lines used to obtain the claimed Tomato fruit was not found necessary for enablement. The inventive step of the claimed tomato fruit was found to lie in the low expectation of success of the performed selection.

Wednesday, 28 September 2016

T 2091/12 - Changing a fresh ground to an old ground

Some fresh ground coffee
With its appeal, the opponent filed a new novelty attack based on prior use. He also filed evidence supporting the prior use allegation. 
Novelty was not a ground of opposition in first instance. In the summons, the board notes that it is thus a fresh ground of opposition. As the proprietor did not agree to having it introduced in the proceedings, the fate of this new attack seems ensured. 
However, in his written submissions the opponent files an inventive step attack based on prior use, and supported by the evidence he filed with his statement of grounds. Alas, by this time the board considers it too late in the appeal proceedings, and does not admit the new attack.