Friday, July 29, 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, July 26, 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.

Tuesday, July 26, 2016 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.

Friday, July 22, 2016 T 1663/13: apportionment of costs of appeal procedure

This appeal has been filed after a decision of the Opposition Division and the decision relates to the apportionment of costs of the appeal procedure.
In this case it is not the first time that apportionment of costs is a subject of the discussion. Also during the Opposition procedure, in view of the fact that the Opponent had informed the EPO only at a very late stage that it would not attend the oral proceedings, the Opposition Division decided that the proprietor's request for apportionment of costs was justified and ordered that its travel and accommodation costs be borne in full by the Opponent.
The Opponent filed the appeal. In his statement of grounds he argued that the patent should be revoked. He did not appeal to the decision of the apportionment of costs. Three days before (first) scheduled oral proceedings of the Appeal, the Opponent (Appellant) withdrew its request for oral proceedings and withdrew the appeal. Thereafter the proprietor requested apportionment of costs for the costs that he made with respect to the appeal procedure. After some communication in writing, the Board summoned the parties for (second) oral proceedings to discuss the apportionment of costs of the appeal proceedings. The proprietor informed the Board that he would not attend the (second) oral proceedings. The Opponent requested one day before the (second) oral proceedings a postponement of the (second) oral proceedings. 
This decision discusses whether the (second) oral proceedings will be postponed and discusses the apportionment of costs of the Appeal proceedings. The history of the file seems to influence the decision.

Tuesday, July 19, 2016 T 2171/14 - Special reasons for not remitting, despite fundamental deficiencies in first instance

In this decision, the Board concluded that the "impugned decision from the Opposition Division presented a fundamental deficiency in that there is no reasoned decision in regard to the specific objections under Article 100(c) EPC made against Auxiliary Request V, which objections had been made originally against the main request and, as specifically stated in the minutes of the oral proceedings (see point VII above), had been maintained against the subject-matter of claim 1 of Auxiliary Request V found allowable by the opposition division. The impugned decision also does not contain any reasoned decision with respect to the further opposition ground under Article 100(b) EPC, nor with respect to the subject-matter of independent claim 12. The missing reasoning on the mentioned opposition grounds together with the remarks made by the opposition division in the "preliminary comments" section of the reasons for its decision, give rise to serious concerns as to the way in which the opposition division approached in particular the objections made under Article 100(c) EPC, as briefly explained below". The Board then carefully considered whether to remit the case -the "normal" procedure in case if fundamental deficiencies in first instance proceedings- or not. And concluded not to (r.5-5.5), but to  examine the opposition themselves. In examining Art. 100(c) EPC / Art.123(2), the Board took explicit care to not limit the the exact text of the application as filed, but to consider what the skilled person would directly and unambiguously derived from the application as filed (e.g., r.6.4.2, r.6.4.3(g)).

Friday, July 15, 2016 T 1272/10 Continuing opposition appeal proceedings after lapse of the patent?

If in opposition proceedings the patent turns out to have fully lapsed, the opposition proceedings are only continued at the request of the opponent [R.84(1)]. The same principle applies in opposition appeal proceedings [R.100(1)]. But does this make sense if the opponent has not appealed? The Board does not think so.

Tuesday, July 12, 2016 R 2/14 - Is there an undue burden?

Undue burden?

This is a successful petition for review.  

Claim 1 as granted refers to an amino acid sequence "SEQ ID NO:4". Unfortunately, the sequence contains an error and does not provide the required desaturase activity. The opposition division revoked the patent as not complying to Art. 83 EPC. In the appeal, the proprietor countered that the skilled person could nevertheless prepare a protein having the desired activity. 

In the appeal decision, the board rejects this argument. The relevant part of the decision is the following:

"30. Since the skilled person relying on the patent application was not informed that the protein defined by SEQ ID NO:4 was inactive, and since the patent application neither disclosed any active sequence variants having at least 60% sequence identity nor which positions of SEQ ID NO:4 had to be modified in order to obtain a functional desaturase, it had to go back to E. gracilis and redone the desaturase in order to put the claimed invention into practice. Even though each of the steps necessary for recloning could be performed by a person skilled in the art,- it is the combination of all the necessary steps (isolation of total mRNA, PCR amplification and selection of a group of amplification products with homology to known desaturases, completion of the 5' and 3' ends by RACE amplification, cloning and expression of the full length sequence to assess its function) which creates an undue burden on the skilled person trying to perform the invention. The same applies to the two alternative approaches mentioned by the appellant.

31. Thus, contrary to the requirements of Article 83 EPC, the skilled person would not have been in a position to perform the claimed invention readily and without undue burden across essentially the entire scope of claim 1."

The proprietor raised two complaints against the decision, the second of which is that the board based its decision on facts and arguments in respect of which the parties were not heard and did not reason its conclusions about the objection under Articles 100(b) and 83 EPC.

Friday, July 08, 2016 T 277/12 - Technical feature or particular use?

In this opposition appeal, the novelty of claim 1 is discussed, which reads as follows:

"A life support system for an aircraft, including a first oxygen supply apparatus operable to provide a limited supply of first product gas being one of pure oxygen and oxygen-enriched gas, to a breathing gas supply apparatus, and a second oxygen supply apparatus operable to provide a durable supply of second product gas which is an oxygen-enriched gas containing a lower concentration of oxygen than that in the first product gas to the breathing gas supply apparatus, wherein the second product gas is supplied at a pressure which is higher than that at which the first product gas is supplied to the breathing gas supply apparatus".

Of particular interest is the highlighted part: the Board deliberates whether this implies an actual technical limitation of the system, or merely pertains to a particular use of the system.

The Board considers the answer to lie in the specification: "the skilled person will need to interpret the claim by seeking to understand how the claimed pressure relationship is achieved in the rest of the specification".

Friday, July 01, 2016 T 2365/11: arguments to save your patent that fail without proof

In this opposition appeal the patent proprietor tried some interesting procedure related arguments to save his patent. 
A first line of arguments was based on the fact that in a specific letter another opponent was mentioned than the person who filed the opposition. According to the proprietor: "Since the 'true' opponent was therefore not known, and in any case the original opponent had no legal capacity, this constituted a circumvention of law by abuse of due process according to G3/97, rendering the opposition inadmissible." A second line of arguments was that replacing the chairman of the Opposition Division one day before the oral proceedings resulted in a procedural violation. 
The proprietor was not very successful with these arguments. It seems that the problem was that the proprietor could not prove what he argued - at least he did not provide enough evidence and arguments to show that there was a real circumvention of law and that the new chairman was not well-prepared for the oral proceedings.