Wednesday, 20 September 2017

T 914/13 - One 71(3) in the hand worth two in the bush?

During oral proceedings before the Examining Division, an auxiliary request of the applicant was found to meet the requirements of the EPC.  However, in response to the Rule 71(3) EPC communication, the applicant reverted to earlier higher-ranking requests. The application was refused by the ED. 

The applicant appeals, but in its preliminary opinion, the BoA essentially concurs with the ED in respect of the higher-ranking requests, and additionally finds claim 2 of the auxiliary request for which the intention to grant was issued earlier to contravene Art. 84 EPC.

Ultimately, the applicant files a sole main request based on the subject matter of the 'previously allowed' auxiliary request but with claim 2 deleted, and argues that, except for claim 2 having been deleted, the claims of the main request correspond to those on the basis of which the ED had issued its intention to grant during the examination proceedings.

However, rather than ordering a grant, the BoA remits the case back to the ED for further prosecution, while noting that it is not bound to the previous intention to grant, and suggesting that the arguments provided by the applicant in support of inventive step of the main request were to be heard.

Friday, 15 September 2017

J 19/16 - does a loss of rights in the international phase after regional entry have any effect?

An international application was filed in 2005 (with priority of 2004) with the wrong receiving office -the USPTO- who assigned an application number to it. The international application entered the EP regional phase in Nov 2006, and the EPO assigned a EP application number to it. About three years (!!!) later, the USPTO recognized that they were not a competent receiving office and transmitted the international application to the International Bureau, which assigned it a new international application number. The EPO assigned a new European application number to it. Somewhat later, the EPO issued a loss-of-rights communication due to non-performance of the acts for entry for the application with the new number. The IB/RO notified the (original) applicant's professional representative that the international application (with the new number) was declared to be considered withdrawn for failure to pay the prescribed fees to the IB/RO. Various renewal fees were paid in the European phase. But then, in 2014, the Receiving Section issued a communication that the Euro-PCT application that had two European application numbers assigned would be consolidated as a single application. Furthermore, the appellant was informed that the application could not be processed by the EPO as designated Office, as it was considered withdrawn in the international phase, and that the time limit for requesting review of the findings of the IB/RO under Articles 24(2) and 25(2)(a) PCT seemed to have expired. The Receiving Section on 17 August 2016 decided that the application was deemed to be withdrawn with effect from 22 January 2009. It came to the conclusion that, as the IB/RO with notification of 22 January 2009 considered the international application withdrawn by virtue of Article 14(3)(a) PCT for failure to pay the prescribed fees, its effect as a regular Euro-PCT application (Articles 11(3) PCT, 153(2) EPC) had ceased as from the date of mailing of the notification from the IB/RO, with the same consequences as the withdrawal of a European application (Article 24(1)(ii) PCT). The applicant appealed this decision. Despite a range of arguments, including good faith, the applicant was not successful.

Tuesday, 12 September 2017

T 1329/04

In the decision T 488/16, recently discussed in this blog, it became again clear that the EPO is strict in allowing post-published evidence to prove inventive step. The core decision where this follows from is this decision, T 1329/04. 
The cathwords of this decision: The definition of an invention as being a contribution to the art, i.e. as solving a technical problem and not merely putting forward one, requires that it is at least made plausible by the disclosure in the application that its teaching solves indeed the problem it purports to solve. Therefore, even if supplementary post-published evidence may in the proper circumstances also be taken into consideration, it may not serve as the sole basis to establish that the application solves indeed the problem it purports to solve.
Thus, post-published evidence of a technical effect/advantage is allowed as long as there was enough information in the application as filed to make this 'new' information already plausible. 

Wednesday, 6 September 2017

T 158/14 - Hidden in plain sight

If your appeal to an opposition is entirely based on new documents, which moreover could have been found with a straightforward Espacenet search, should your appeal then be inadmissible? 
The opponent filed two new Japanese documents (D9 and D10) together with its appeal. The proprietor objects to these documents on the basis that they could easily have been found in a search during the opposition period. In particular, the proprietor observes that an Espacenet search in the same EPC class as the opposed patent for the year prior to the priority year gives document D10 as its very first hit.  Document D9 requires a bit more work, but is found in a similar manner. According to the opponent, basing an appeal on these late-filed documents is not only inadmissible but amounts to an abuse of procedure.
The opponent has it own complaints about the proprietor though. Three days before the oral proceedings, a further response is filed of about 90 pages, including new requests. 
The board doesn't go along with either objection. 

Friday, 1 September 2017

T 1519/15 - Not so poisonous parent

A 'family' of Amanita muscaria, which is best not eaten

This Examination Appeal shows the Board applying G 1/15 to what would otherwise have been a 'poisonous parent' situation. The outcome is as expected - the decision under appeal is set aside.

The Examination Division considered , pre-G 1/15, the situation as follows: claim 1 of the divisional application represents a generalization with respect to a species described in an earliest US priority document P1, and thus is, in accordance with the pre-G/15 legal situation, in its entirety entitled only to a later priority date from a US priority document P2. The EP parent application, which is cited as D3, also describes P1's species and is thus, at least in as far as pertaining to this species, entitled to the earliest priority date P1. D3 thus belongs, at least in as far as the described species, to the Art. 54(3) State of the Art of the divisional application and thus takes away the novelty of claim 1.

Thursday, 24 August 2017

T 293/12 - First substantive response after summons

Will the board admit a 'just in time' submission?

What is the position of a party in opposition appeal who did not respond to the statement of the grounds, but did file a submission in response to the summons to oral proceedings? 
In response to the notice of appeal, one of the opponents (respondent 2) filed a brief letter stating that it would await the statement of grounds of appeal and announced its intention to submit a reply later in due course. After the statement of the grounds was filed, the board set a time limit of 4 month to file such a response. However, no further submissions were filed until a month before oral proceedings. 
The proprietor considers that the opponent has lost it chance to file arguments, by not filing a timely response to the statement of the grounds--since the opponent had not filed a reply to the grounds of appeal, one cannot regard its later submission as an amendment to a party's case. On the other hand, the opponent considers the submission to be just further arguments, and sees no reason why they should not be admitted. The board find a middle ground, taking the submission into account but as a later amendment to a party's case.

Tuesday, 22 August 2017

T 1090/12 - Common general knowledge referred to by a board

Under what circumstances does common general knowledge require proof? And who has to provide proof: applicants/proprietors, opponents, examining divisions, opposition divisions, and boards of appeal, any differences or all alike? Is it required that doubt is substantiated -rather than just asserted- as to its existence before it has to be proven? The Case Law Book (8th edition, July 2016) provides in section I.C.2.8.5 "Proof of common general knowledge": "Where an assertion that something is common general knowledge is challenged, the person making the assertion must provide proof that the subject-matter in question is in fact common general knowledge (T 438/97, T 329/04, T 941/04, T 690/06). In the case of any dispute as to the extent of the relevant common general knowledge this, like any other fact in contention, has to be proved, for instance by documentary or oral evidence (T 939/92, OJ 1996, 309, see also T 766/91, T 1242/04, OJ 2007, 421; T 537/90, T 329/04 and T 811/06). The proof is regularly supplied in citing literature (T 475/88). According to T 766/91 and T 919/97, evidence of general technical knowledge need be submitted only if the latter’s existence is disputed.". In the current case, the board however seems to indicate that the situation is different if the board itself uses common general knowledge to invalidate a claim.