Friday, 12 August 2016

T 799/12 - Clarity in opposition appeal

In this opposition appeal, the proprietor challenged the clarity objection that was raised against claim 1 as amended made during first instance opposition proceedings, but which was only raised with the grounds of appeal. He was however unsuccesful: amendments made during opposition are to be examined for compliance with all EPC requriements and the amendment was based on the description (not just an incorporation of an unclear dependent claim - G 3/14). Further, the board of appeal has the power to examine all EPC requirements, not just the ones on which the decision was based: the Board thus examined clarity, and also admitted new arguments against inventive step based on a document that was not used in any objection before.

Tuesday, 9 August 2016

T 360/11 - Very late needs to be very clear

In this appeal against the decision to refuse, the applicant filed amended claims in response to the summons for oral proceedings, aiming to overcome the Art.84 and Art.123(2) objections in the preliminary opinion of the Board, and further amendments in the course of oral proceedings. The Board did however not admit the amended claims into the proceedings, as very late amendments are required to be very clear. 

Sunday, 7 August 2016

T 1727/12 Sufficiency of disclosure for a broad claim

In this decision the Board has to go into different forms of lack of disclosure. The Board is not a big fan of the British term ‘Biogen sufficiency’ and goes back to the original decision T 409/91 and terminology used in that decision (“the patent monopoly should be justified by the actual technical contribution to the art”). 
In opposition proceedings, Art.84 cannot be used in this respect. In the opinion of the Board, the opposition division has not been convincing in proving that Art.83 was violated. In particular, the opposition division believed that features of dependent claims 3-5 were required for the invention of claim 1, but the division did not come up with options which the skilled person would not know how to carry out. The burden of proof was thus not met.

The Board remitted the case back to the opposition division for further prosecution. No oral proceedings were held, since the request "In the event that the Patent is not to be maintained in the form in which it was granted, the Proprietor requests oral proceedings" does not cover the situation wherein the Board does not take a final decision on the case itself but remits the case.

Wednesday, 3 August 2016

T 1717/13 - How many tries should you get in OP?

How many tries should an opposition division allow a proprietor to rectify an added subject matter problem? After the opposition division had maintained its added subject matter objections during the oral proceedings, the proprietor filed three more auxiliary requests. The first two were admitted into the procedure but the third was not. The reasons given in the minutes are that the third request was late filed and did not resolve an earlier objection.

In appeal the proprietor alleged that procedural violations took place. In particular, he claims that:

(a) by not admitting further claim amendments to overcome newly raised objections by the opposition division during the oral proceedings; in this respect, the opposition division exercised its discretion to disregard amendments incorrectly;

(b) by causing the patent proprietor's representative to be taken by surprise during the oral proceedings by giving contradictory reasoning, which made it difficult to react to newly raised objections;

(c) by not giving sufficient time to take into account the newly raised objections during the oral proceedings and to consider a new version of a main claim in order to be able to appropriately react to the newly raised objections.

The board gives the opposition division a wide berth to make its own decisions with respect to admitting auxiliary request or not. Some doubts are expressed about the divisions refusal to allow all  further auxiliary requests, but in the end no substantial procedure is found. 

At the end of the cited part of this decision there is also an interesting analysis of intermediate generalizations.

Friday, 29 July 2016

T 1742/12 - Close, closer, closest prior art

The most promising springboard?

In this examination appeal, the concepts of 'closest prior art' vs. 'a suitable starting point' in inventive step are discussed. Decisions such as T 967/97 and T 21/08 (also cited in the present case) have tended towards the inventive step having to be assessed relative to all suitable starting points, rather than presuming the existence of one closest prior art document to be used as sole starting point.

In this case, according to the Board's preliminary opinion, the claimed invention lacked an inventive step over D1. With its letter of response, the appellant introduced a document that had been considered in a related case, D6, and argued that given the existence of D6, D1 cannot be closest prior art and that, hence, the inventive step assessment had to start from D6.

The present Board does not follow this line of argument, and rather deliberates that it cannot be true that if a claim is considered obvious with respect to D1, it cannot be rendered non-obvious if a closer prior art, e.g., D6, was found, i.e., an inventive step argument cannot be refuted merely by the introduction of another piece of prior art. Thereby, T 967/97 and T 21/08 are followed.

Tuesday, 26 July 2016

T 803/12 - No right to two instances

In continuation of the patent being revoked in opposition due to lack of sufficiency of disclosure, the proprietor appeals the decision. The proprietor requests the case to be remitted to the Opposition Division as he is of the opinion the his right to be heard has been violated and that he is entitled to be heard in two instances according to Art. 32 of the TRIPS agreement and based on Art. 125 EPC, Furthermore, the proprietor requests the Board to order a correction of the minutes of the oral proceedings before the Opposition Division.

The Board disagrees with the proprietor in all aspects. The case is not remitted, the minutes are not corrected and the patent remains revoked.

T 2306/12 - Unclear how to measure particle size

Pretty particles, but not related to the patent

During opposition proceedings, the proprietor had included in his main claim that "the size of the active ingredient particles is less than 10% of the particle size of the inclusion bodies". The feature was taken from one of the dependent claim in the granted patent.

The patent description does not say how the particle size is to be measured. As the particles are not round, there is no obvious way to measure particle size. The opponent objects that because of this the description does not disclose the invention sufficiently. 

The board is not convinced. We had a similar situation in T 2182/11.