Tuesday, May 30, 2017 T 260/14 - Partial priority for a working example of a generic claim feature

The opposition division did not allow the main request as it considered  the priority application to be prior art pursuant Art. 54(3) EPC and the generically worded claim 1 of the main request to be anticipated by an examplary dental impression material disclosed in the priority application ('poisonous priority'). The proprietor appealed and argued that partial priority should have been recognized, following the principles of G 1/15. In the opponent's view, the claim was not entitled to partial priority and the working example of the priority document (also present in the granted patent) destroyed the novelty of the claim. In the decision , the Board carefully explains how G 1/15 is to be applied, and confirmed partial priority for the part of claim 1 concerning the working example. Consequently, the claim was novel.

Wednesday, May 24, 2017 T 540/13 - Impossible to establish whether facts or arguments were filed or not

The opposition division had informed opponent O1 that "The notice of opposition contains no statement of grounds on which the opposition is based (Rule 76(2)(c) EPC)" and that "the notice of opposition will be rejected by the opposition division as inadmissible...". The opposition division issued a decision revoking the European patent as the ground for opposition pursuant to Article 100(c) EPC prejudiced the maintenance of the patent as granted. In addition to revoking the patent, the title page of the decision states: "Additional decision: The opposition of the opponent(s) O1 is rejected as inadmissible". Appeals were filed by the patent proprietor and opponent O1.  In its statement of grounds of appeal, appellant-opponent O1 requested that "the decision of the Opposition Division that rejected Opponent O1's opposition on grounds of inadmissibility pursuant to Rule 77 EPC be set aside and that Opponent O1's opposition be considered admissible". The Opponent argued that the facts and arguments in support of the grounds for opposition required by Rule 76 EPC were included in the DHL package that was timely filed within the opposition period, whereas the opposition division held that "Facts and arguments substantiating the indicated grounds for opposition have not been filed within the opposition period. Even the paper confirmation received on 4 October 2007 ... did not comprise facts and arguments, as has been confirmed by file inspection". How did the Board deal with these opposite positions of Opponent O1 and the opposiion division? And how did this effect the party status of the Opponent?

Friday, May 19, 2017 T 1852/13 - Essentiality test vs. gold standard

The gold(en) standard?

This case concerns a divisional application in which a feature was removed from claim 1 with respect to claim 1 of the parent application, and whether such removal satisfies the requirements of Art. 76(1) EPC (and equivalently Art. 123(2) if it were to be performed as amendment).

This situation is dealt with by the 'essentiality test' of T 331/87.

This case discusses the essentiality test as it differs across its various versions (English original vs. German translation, original decision vs. guidelines), how it was applied in the recent past, criticism on the test including the criticism raised previously in T 910/03, and most importantly, how it fits into the 'gold standard' established by G 2/10.

After various deliberations, the Board considers the essentiality test to be dead: "Die Kammer ist zum Schluss gelangt, dass der Wesentlichkeitstest nicht mehr zum Einsatz kommen sollte", with one of the reasons being that the original phrasing of 'may not' in T 331/87 leaves open the possibility that all three conditions of the test are satisfied yet that Art. 123(2) is still violated.

As such, the Board considers that the essentiality test cannot replace the gold standard even in its specific application area (removal or replacement of a feature).

Is the essentiality test now finally dead? After T 910/03 it languished but occasionally reappeared.

The Board refrains from referring the matter to the EBoA as it considers such referral not to be decisive in the present case, since according to the Board a same conclusion would be reached using both the essentiality test and the gold standard (being that the removal violates Art. 76(1) EPC).

Monday, May 15, 2017 T 1965/11 Materialised Views

The claimed invention makes use of available materialised views in order to improve database query performance. Due to the age of the application (filed in 2001), the Board examines inventive step in an appeal concerning added subject matter.

Friday, May 12, 2017 T 1811/13 - Can lack clarity imply lack of sufficiency?

Where exactly are the boundaries of the forbidden  area?

Can a lack of clarity in a claim lead to insufficiency of disclosure? The opponent tries to convert a clarity objection into a lack of sufficiency. The argument is that, the impossibility for the skilled person to know whether he is working within the forbidden area entails the impossibility of carrying out the invention.

To support the point a number of T decisions are cited which side with this argument. The board trumps it though with even more T decisions that do not agree. At the end, the board does concede though that in other situations this argument might work. 

Wednesday, May 10, 2017 T 1463/11 - Business person versus Skilled person

Is it technical to centralize a function?

The appeal concerns a centralized merchant authentication processing system. The Examining division rejected the application as a "straight-forward implementation of an administrative (outsourced payment) scheme using a notorious distributed information". Initially, also the Board did much like the invention. In the summons, the Board considered the invention to be a "straightforward implementation, on a standard computer network, of non-technical measures (business measures and programming measures)".

Something must have happened after that because the appeal resulted in an order to grant. The reasons provide a detailed discussion of the 'business person' versus the 'skilled person'. 

Monday, May 08, 2017 T 1658/12 - When prior art Claims and Description contradict

A cupcake dispensing machine

The Examining division has rejected a patent application for a dispensing system on the basis of a document D2. 

According to the Examining division, the subject-matter of claim 1 was not explicitly disclosed in the description of D2, since it did not explicitly disclose that "the processor sends a signal to said at least one dispensing means" in combination with the feature that "presentation of the user-identifier to the reader causes dispensing of the selected item". However, document D2 did disclose such an automated use of the system in claims 35-38.

The Board does not agree with the Examining division and offers the following catchwords:

In determining what is made available to the public within the meaning of Article 54(2) EPC by a prior art patent document, it must be borne in mind that it is the description which chiefly serves to disclose the invention in a manner that it may be carried out, whereas the chief function of the claims is to define the subject-matter for which protection is sought. Where a combination of features is found only in the claims (or only in the claims and a "Summary of the Invention" which merely recites the features of the claims), it must be very carefully considered whether this combination truly corresponds to the technical teaching of the document as it would be understood by a skilled person, or whether it is merely an artefact of the claim drafting process aimed at obtaining maximal scope of protection (see Reasons, point 3.8; also T 312/94, Catchword; T 969/92, Point 3, and in particular, page 4, first paragraph; T 42/92, "Orientierungssatz").

Tuesday, May 02, 2017 J 12/16 - Same patent transferred twice to different parties

Finding the right transfer

The EPO was confronted in this case with a patent that was transferred twice. After sending out the intention to grant, the EPO received a first transfer on 01.06.2015 from the applicant to a second party. About a week later, on 10.06.2015 the EPO received a second transfer of the same patent but to a different, third party. 

Unfortunately, for the second party, there is a problem with his transfer (the fee wasn't timely paid). Although the third party sent its transfer later, the formal requirements were satisfied sooner. According to Rule 22 EPC a transfer request is not deemed to have been filed until the fee has been paid, and so it is the second transfer request that is executed.  

Of course the second party is not happy with this, the more so that his contract with the applicant was signed much sooner, on 5.6.2014. The second contract with the third party was signed only the day before it was registered, i.e., on 09.06.2015. The second party appeals the rejection of his transfer, but in the meantime the patent has been granted in the name of the third party. 

The appeal board does not side with the unlucky second party; for transfers it is first come first serve. Since the third party satisfied the requirements sooner, his request wins. Nonetheless, the board is not happy with the way the case has been dealt with. Because the patent granted, the EPO lost its competency regarding transfers. This made the appeal pointless. 

The board offers the following catch phrase (my translation)

During the time period for filing an appeal against the simultaneous rejection of request of a transfer and of a stay of proceedings, and because of the suspensive effect of a still-to-be-filed appeal, the register should not be changed in a way that could affect the course of a subsequent appeal procedure.