Friday, 23 March 2018

Live with your untidiness

In this opposition appeal, both the proprietor and the opponent appealed the decision of the Opposition Division to maintain the patent in amended form. Besides the main request of maintaining the patent as granted, the proprietor filed a 2nd auxiliary request corresponding to the request held allowable by the OD, although did not specifically mention in the grounds of appeal that these requests were the same. The proprietor's 1st auxiliary request was identical to his 2nd, except for the addition of a new dependent claim 5, which was added to establish identical dependency as in the underlying PCT application.
The Board did not admit the1st auxiliary request into the proceedings, since the amendment was not occasioned by the impugned decision or by a new objection raised by the opponent. Rather, the request was viewed by the Board as an attempt to tidy up the allowable claim set and thus not admissible under Art. 12(4) RPBA.
The Board further observed that for admissibility under Art. 12(4), compliance with Rule 80 EPC is not the decisive factor.
The opponent attempted to argue that the proprietor's 2nd auxiliary request was inadmissible because it was not readily apparent from the proprietor's written submissions that the request corresponded to the request allowed by the OD, in contravention of Art. 12(2) RPBA. The Board held that there is no requirement under this article to indicate in the grounds of appeal that a claim request has already been submitted in the first-instance proceedings.
The 2nd auxiliary request was found admissible and was allowed.

Tuesday, 20 March 2018

T 660/14 - an undisclosed disclaimer after G 1/16

In this appeal, the proprietor gave as a basis for the subject-matter of claim 1 of auxiliary request 4 meeting the requirement of Article 123(2) EPC that the subject-matter of claim 1 includes an undisclosed disclaimer. The undisclosed disclaimer was not of the most common type of disclaiming a Art.54(3) EPC prior right disclosure. The proprietor considered the alleged undisclosed features as either one or two undisclosed disclaimers. The proprietor submitted that the disclaimed feature/features provided no technical contribution to the claimed device, and had no real meaning apart from excluding an incorrect interpretation of claim 1, such that the requirements for disclaimers to be allowed under Article 123(2) EPC as mentioned in G1/16 were fulfilled. The Board of Appeal disagreed: according to the Enlarged Board of Appeal decision G1/16 (see e.g. Headnote), to be allowable under Article 123(2) EPC, the introduction of an undisclosed disclaimer may not provide a technical contribution to the subject-matter disclosed in the application as filed. In particular it may not become relevant for the assessment of inventive step (G 1/16 Reasons, point 49.1). 

Wednesday, 7 March 2018

T 0611/15 - No pain, no gain

In this opposition appeal, the Proprietor appealed the decision of the Opposition Division to maintain the patent in amended form. The joint opponents also appealed this decision, but did not attend oral proceedings. Also party to the appeal proceedings were two assumed infringers, in the capacity of interveners.

The Proprietor requested that the patent be maintained as granted (main request), auxiliarily that the decision under appeal be set aside and the patent be maintained in amended form on the basis of the first auxiliary request filed in during first instance proceedings, or on the basis of the request found allowable by the Opposition Division (second auxiliary request). The Proprietor further requested that the patent be maintained on the basis of the claims of one of the third to fifth auxiliary requests filed during the oral proceedings.

However, during the oral proceedings the Interveners submitted that it is evident from the contested decision and the minutes of the oral proceedings before the Opposition Division that the Proprietor had withdrawn the main request and first auxiliary request, maintaining the second auxiliary request as the sole request. As the contested decision was favourable in respect of this sole request, the Proprietor was not adversely affected by the decision and consequently the Proprietor's appeal is to be rejected as inadmissible, Article 107 EPC and Rule 101(1) EPC. Furthermore, as the Proprietor's appeal is not admissible, the main and first auxiliary requests submitted in the appeal proceedings are not admissible in view of the principle of reformatio in peius. 

The Interveners further argued that in each of the third to fifth auxiliary requests the respective claim 1 prima facie gave rise to new clarity objections under Article 84 EPC which neither they nor the Board could reasonably be expected to deal with without adjournment of the oral proceedings.

The Board essentially went along with the Interveners' submissions. As a result, during the oral proceedings the proprietor was merely able to defend his second auxiliary request - i.e., the request found allowable by the Opposition Division.

Friday, 2 March 2018

R 3/16 - Do not frighten the Board of Appeal

This is a petition for review against a decision of a Board of Appeal rejecting the opposition of an opponent in an opposition case. During opposition the opponent requested replacement of the members of the division based on a suspicion of partiality. This request was rejected by the opposition division. 

The opponent then filed an appeal together with (late) new documents in which he made many new harsh requests. According to some of those requests  (a) the Board should have remitted the case to the opposition division without oral proceeding and before a different composition of the division, (b) the Board should have excluded a rapporteur of the Board from the proceedings because of his alleged incompetence (c) the Board should have been enlarged by a legally qualified member acquainted with the right to be heard issue ...(g) oral proceedings should have been held public such that members of the public could have witnessed the correctness of handling of the proceedings by the Board.

The Board considered request (a) inadmissible. The opponent/appellant insisted on request (a) and indicated that if request (a) was not fulfilled, a petition for review on the ground of procedural violation would have been risen. The appellant even filed to the Board a document describing the skills required by a technically qualified member of the Board of Appeal to show to the Board that the rapporteur objected did not qualified for the function, that the conduct of the Board was a disgrace and went on with this line of mistrust reasoning.

A petition for review was finally filed on the grounds of several procedural violations of the opposition division and Board of Appeal.

As one may expect the Enlarged Board found the conduct of the petitioner quite disrespectful and discarded the petition as clearly unallowable.   

Tuesday, 27 February 2018

T 1567/17 – an unclear waiver is no waiver

In this case, the examining division issued a direct refusal after the appellant had rejected the text intended for grant and requested that examination be resumed based on reasoned amendments. The new main claim incorporated an amended feature which, according to appellant’s own statement, “could be omitted if regarded as violating Art. 123(2)”. The examining division indeed regarded the amended feature as a violation, and interpreted the appellant’s statement as an acknowledgement that the amendment could not be unambiguously derived from the description as filed. The appellant was given no opportunity to respond to the division’s opinion on this issue.

The Board held that the direct refusal of the application was in violation of Art. 113(1) EPC, since the appellant’s statement could not be construed as waiving the right to be heard, but merely intimated that a new R. 71(3) communication would have been accepted on the basis of amended claims without the feature in question.

Only an unambiguous statement as to waiving a party's right to be heard is to be interpreted as a waiver of this right.

The applicant's remark in a response under Rule 71(6) EPC that an amended feature "can also be omitted if regarded as violating Article 123(2) EPC" cannot be construed as waiving its right to be heard and its right to a reasoned decision in case the application were to be refused. Rather, this remark merely intimates that the applicant would accept the issue of a new communication under Rule 71(3) EPC on the basis of the amended set of claims without said feature.

Thursday, 15 February 2018

R 4/17 - Four is a party

In the present case, the Opponent appealed the decision of the Opposition Division to maintain the patent as granted. The Board of Appeal sent three registered - but without advice of delivery - communications (notice of appeal; statement of the grounds of appeal; further letter) to the Respondent-Proprietor. In the absence of any response from the Proprietor to these letters, the Board of Appeal considered itself to be in a position to issue a decision revoking the patent without the need to hold oral proceedings. This decision of the Board was sent to the parties under cover of a registered letter with advice of delivery. 

The Proprietor filed a petition for review of the decision, arguing that it had no record of ever having received the first three letters, thus depriving him of his right to be heard.

The Enlarged Board now deals with this petition for review, and finds that in the present case, the Proprietor had, within the meaning of Article 113(1) EPC, no opportunity at all to comment on the grounds for the decision under review. This qualifies as a fundamental violation of his right to be heard.

In the event of any dispute about whether a letter from the EPO reached the addressee or on which date, it is incumbent on the EPO to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee (Reasons, point 2).

[...] parties must be able to rely on the EPO complying with the relevant provisions of the EPC and, at least for the purposes of Article 113(1) EPC, they and their representatives have no duty to monitor the proceedings themselves by regularly inspecting the electronic file (Reasons, point 4).

In respect of the implausibility of the non-arrival of letters put forward by the Other Party the Enlarged Board considers that it cannot be expected that the Petitioner should prove a negative, that is the nonreceipt of a letter, or provide a plausible explanation for non-receipt (Reasons, point 4). 

T 447/13 - Trivially or seriously ill?

Better send in a doctor's certificate?

In the present case, the professional representative became ill before the scheduled OP, and excused him/herself by a phone call and subsequent letter indicating that he/she had "take[n] ill" while requesting the OP to be rescheduled. The request was refused by the ED for the reasons that the representative referred in his letter only to illness and not to serious illness, and that the request was not accompanied by a substantiated written statement indicating the reasons.

The Board now deals with this matter in appeal, and finds that the ED did not properly exercise its discretion but rather took an unreasonable approach based on a wrong principle.

For the purposes of deciding whether to grant a request for postponement of oral proceedings on grounds of illness, the reference to "serious illness" in the Guidelines means an illness which is sufficiently serious to prevent the representative travelling to oral proceedings and presenting the case on the appointed day (Reasons, point 5.3).

Where a request for postponement of oral proceedings is refused on the ground that the request was not sufficiently substantiated, it is incumbent upon the Examining Division to explain why it considers the substantiation insufficient. In other words, it should state in clear terms what, in its opinion, should have been submitted or explained, but was not (Reasons, point 6.4).