Lithuania accedes to the London Agreement

On 22 January 2009, the Republic of Lithuania deposited its instrument of accession to the London Agreement, see OJ EPO 2001, 549. The Agreement entered into force for Lithuania as 15th contracting state on 1 May 2009.

Lithuania does not require proprietors of European patents to supply a translation of the patent specification, irrespective of the language in which the Office granted the patent. However, a translation of the claims into Lithuanian is required.

Questions with respect to the London Agreement may pop up in the DII exam and may be worth a few marks. Read more on the London Agreement here.

This message will be copied to the Official Journal 2009 summary, which can be downloaded here.

T 1392/04: Guidance with respect to burden of proof

After opposition proceedings EP 0 952 241 was maintained in amended form. Appeal was filed by the opponent. Claim 1 of the patent as maintained recites inter alia a diameter of certain crystallites. According to the opponent the claim did not recite how to measure this diameter and argued that different measurement techniques would result in different values. For that reason the opponents tried to attack the claim based on lack of clarity and insufficiency of disclosure. 

This attack fails in view of established case law  followed by the Board of Appeal, see reasons 3 and 4. (Lack of clarity not objectionable if lack of clarity already present in claims as granted and G9/91: No fresh grounds in opposition appeal without consent of proprietor)

The Board remits the case to the Opposition Division and in reasons 15-21 provides guidance on the legal approach to be adopted with respect to the burden of proof. These parts, summarised below, form to my opinion very interesting reading material in preparation for the EQE and/or understanding the EPC.

R. 15 : The general rule is that the legal burden of proof is on the party who has to establish a fact.

R. 16: In the case of lack of novelty the legal burden of proof is on the opponent. Claimed subject-matter would lack novelty only if it were derivable as a whole directly and unambiguously from a prior art disclosure and if a "clear and unmistakable teaching" of the combination of all claimed features (and not only the essential ones) could be found in said disclosure (see decision T 0411/98, point 4.1).

R. 17: Where as in this case for the feature of crystallite size [..] the claim is silent as to how a particular feature is to be measured, it is open to the opponent to adopt any method of measurement which can be said to be standard for a skilled person in the art concerned, and show that on this method of measurement the claimed feature is already known from a particular piece of prior art.

R. 18: If the proprietor wishes to argue that a feature in a claim needs to be measured in a particular way mentioned in the description, then for this argument to be accepted it is first 

necessary to limit the claim to this method of measurement by amendment, assuming this can be done meeting the requirements of Article 123(2) EPC. It is not enough to argue that the claim should be read in a particular way, when the wording of the claim does not require this. 

Article 69 EPC and the protocol thereto cannot be relied on to read a claim in a restricted sense which is not required by the wording of the claim itself. Article 69 EPC and its protocol were intended to allow a claim to be read by a court, considering an alleged infringement, in a broader way than might have been suggested by the strict wording of the claim, and were not intended to allow a claim to be read in a more restricted way than that suggested by its wording so as to avoid a novelty objection.

R. 19: When it comes to considering inventive step the legal burden of proof of showing that at least part of the claimed subject matter can be derived in an obvious manner from the state of the art is on the opponent. 

R. 20: However, where the proprietor alleges that the problem to be solved by the subject matter claimed over the closest prior art is to obtain an improvement of some particular property of this closest prior art, the legal burden of proof that there is an improvement is on the proprietor. A mere allegation that there is an improvement is not sufficient, there should be at least some experimental evidence that the particular property of the prior art is improved, when this closest prior art is modified in the minimum way necessary to fall under the subject matter now claimed. Experimental evidence is required to show that the improvement is necessarily attributable to the difference between the claimed subject matter and the closest prior art. The instances of the EPO should also be satisfied that this evidence makes it plausible that the problem has been solved over the whole range of the subject matter claimed.

R. 21: It is of course not necessary that the claimed subject matter achieve an improvement. If the subject matter claimed provides an alternative to the closest priorart this may suffice for 

inventive step to be recognized if there are no reasons why the skilled person would modify the state of the art in the direction of what is claimed.

Read the full decision here.

G Summary available !

In the download area the EQETools “G Summary” is now available.

The G Summary is an overview I made of most of the Enlarged Board of Appeal decisions. The headnotes and the most relevant reasons are reproduced and I’ve added a few keywords to each decision.

I’m planning on updating the headnotes and reasons in view of EPC 2000, this will be done in the course of this year. Of course new decisions will be added when available.

Knowing the G decisions is important. Not only for passing the EQE, but also for your daily work as a European Patent Attorney (trainee). By that I mean that you need to know that there is a decision that deals with a certain issue. It would be nice to know the corresponding case number by heart, but be careful, a mistake is easily made !

By way of (a stupid?) example, when referring to the Enlarged Board decision related to the “same invention” of Art. 87 EPC you cite G2/98 and not G2/89…..

Moreover as the number of decisions is increasing it becomes more and more difficult to actually memorise all case numbers anyhow. Thus, always check which case number should be cited. This tool has helped me, hopefully it is useful to you as well.

Print this document, for example in the form of an A5 booklet, make further annotations if desired, and take it to the exam. It will help you in quickly finding the right case number when necessary.

I would say this tool is not really suitable for studying purposes only. I have found it quite helpful to actually read the respective decision entirely, or at least read the reasons. Doing so will help you understand the EPC system and moreover the way the EPC should be interpreted.

Then, when you have studied these decisions this booklet may help you in remembering all cases by reading through the booklet every now and then.

Give it a try and let me know what you think!
EQETools

Design changes

Just so you know, I'm in the process of modifying the design of this weblog. Thus, the looks and feel may change the next weeks. Of course the content will stay.

One of the first modifications concern the new logo and the added printing functionality.

You can now print the posts without the additional content of the header and the side-bar. First select a post by clicking on it's title, which will bring the post in a new window. Then scroll down to the end of the post where you find a link "Print this post". I have tested this succesfully with Google Chrome and Internet Explorer. For some (unknown) reason Firefox will only print the first page.

T0083/06: An example of the application of G4/95

According to G4/95 a Board of Appeal may at its discretion allow a person accompanying a professional representative in opposition appeal proceedings to make oral submissions if the following criteria are met :

(i) The professional representative should request permission for such oral submissions to be made. The request should state the name and qualifications of the accompanying person, and should specify the subjectmatter of the proposed oral submissions.

(ii) The request should be made sufficiently in advance of the oral proceedings so that all opposing parties are able properly to prepare themselves in relation to the proposed oral submissions.

(iii) A request which is made shortly before or at the oral proceedings should in the absence of exceptional circumstances be refused, unless each opposing party agrees to the making of the oral submissions requested.

(iv) The EPO should be satisfied that oral submissions by an accompanying person are made under the continuing responsibility and control of the professional representative.

In T0083/06 this particular decision of the Enlarged Board was applied:

R2.2 : ... the appellant's request was filed about three weeks before the oral proceedings and did not specify the subject-matter of the proposed oral submissions despite the communication of the Registry of the board [ ] . 

The subject-matter of the proposed oral submissions was only specified during the oral proceedings. Thus at least the above criterion (i) established by G 4/95 was not fulfilled by the request made about three weeks before the oral proceedings, as it did not specify the subject-matter. 

While the subject-matter of the proposed oral submissions was specified at the oral proceedings, the respondent (opponent) did not agree to the making of the oral submissions requested, as required in principle by the above criterion (iii). In the absence of exceptional circumstances the board therefore refused the appellant's request.

Questions relating to G4/95 pop up during the C exam (opposition paper) every now and then . 

PCT Newsletter 2009 #5

The latest issue of the PCT Newsletter (No. 05/2009) is now available on the PCT Resources page

http://www.wipo.int/edocs/pctndocs/en/2009/pct_news_2009_05.pdf

With respect to the EQE, at least read the practical advice ...

San Marino accedes to the EPC

Copied from the EPO website:

On 21 April 2009, the Government of the Republic of San Marino (SM) deposited its instrument of accession to the European Patent Convention (EPC).
The EPC will accordingly enter into force for San Marino on 1 July 2009.

European patent applications filed on or after 1 July 2009 will include the designation of the new contracting state 1. It will not be possible to designate San Marino retroactively in applications filed before that date.

To allow the new contracting state to be designated, however, the EPO will accord European patent applications filed in June 2009 the filing date of 1 July 2009 if the applicant expressly requests that filing date when filing the application.

This message is incorporated in the OJ 2009 summary.

EPC Quick reference tool now available

The EPC Quick reference tool is now available, you can download it here.

The EPC Quick reference is a 2 page overview containing most of the EPC articles and rules indicated by a few keywords.

When preparing for the EQE by practicing former exam questions (or other questions as for example obtainable from Delta Patents) this tool will help you in quickly finding the starting point for your answer instead of having to turn numerous pages in a book. Of course once you have the starting point you will need the actual article or rule itself, so this tool is to be used in addition to the EPC.

Just like the G book (which will be published soon) the EPC Quick reference is very suitable for reading through every now and then to get the EPC in your system before sitting the EQE. I personally did not use the tool at the EQE myself as the articles and rules "landed" quite well during my preparation.

So, here you go, yet another free tool. Give it a try and let me know what you think!

EQETools

T440/04: The danger of undisclosed disclaimers

In G1/03 the Enlarged Board of Appeal set out the conditions under which it was allowable to introduce a so-called undisclosed disclaimer. For those of you who can't remember :

An amendment to a claim by the introduction of a disclaimer may not be refused under Art. 123(2) EPC for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of the claim have a basis in the application as filed.

The following criteria are to be applied for assessing the allowability of a disclaimer which is not disclosed in the application as filed:

1.A disclaimer may be allowable in order to:

- restore novelty by delimiting a claim against state of the art under Art. 54(3) and (4) EPC;

- restore novelty by delimiting a claim against an accidental anticipation under Art. 54(2) EPC;

- disclaim subject-matter which, under Art.s 52 to 57 EPC, is excluded from        patentability for non-technical reasons.

2. A disclaimer should not remove more than is necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons.

In T440/04, a patent was maintained in amended form by the Opposition Division. Due to loss of priority, a patent application in the name of the proprietor of the patent in suit became prior art under Art. 54(3) against the latter.

The patent related to man-made vitreous fibres of a certain composition comprised of a number of components each having a certain range in concentration. These fibres  have certain properties such as sintering temperature and dissolution rate.

One example in the 54(3) document, referred to as C63, disclosed a fibre having a composition falling within the claimed range. The proprietor therefore introduced a disclaimer in claim 1 which would restore novelty over C63 hence be allowable in view of G1/03. C63 did not disclose the specific property of sintering temperature, yet since the fibre composition was within the claimed range the sintering temperature was disclosed implicitly (proprietor confirmed this, see 4.2.2 of the decision).

The Board of Appeal analysed the allowability of the disclaimer and came to the conclusion that C63 did not only disclose the specific example, but also further embodiments with a composition close to the one as claimed in the several requests.

4.3.1 : ... it is immediately apparent from C63 that example 1 is not an isolated example but serves to illustrate one preferred alternative wherein the fibres [..] have a composition within the preferred ranges [..]. In view of the said generic indications [..] the board considers that the teaching of this document having regard to the production of high alumina fibres falling within the ambit of the present claims 1 according to all requests is not strictly limited to what is described in example 1.

4.3.2: More particularly, considering that an example given in a patent application usually represents a useful and preferred embodiment of the broader teaching disclosed therein, the board takes the view that in the absence of indications to the contrary the skilled person would seriously contemplate (in the sense of e.g. decisions T 0666/89 and T 0245/91) applying the teaching [..] of C63 to the production of fibres having compositions within the preferred ranges taught for the high-alumina alternative, according to the method disclosed in C63 in connection with the example [..]. More particularly, the skilled person would contemplate applying the said teaching of C63 to the production of fibres with compositions
substantially equal or close to the composition of example 1 of C63, i.e. compositions belonging to a subregion of the overlap between said preferred ranges and the ranges of the present claims, which sub-region encloses example 1.

The Board further says in R 4.4 :

Whereas on the one hand a disclaimer should not remove more than is necessary to restore novelty, it cannot, on the other hand, be considered to serve its intended purpose when it excises less than what is necessary to
restore novelty.

The Board concluded that the introduced disclaimer thus contravened Art. 123(2) and the patent was revoked.

Just an (for the proprietor unfortunate) example of the danger of introducing undisclosed disclaimers....

T2056/08: The 10 day rule of R126(2)

Calculating time limits is a subject that returns in the EQE every year. Some time limits are triggered by a notification by the EPO. An example is the time limit for filing of the Notice of Appeal under Art. 108 The law is quite simple if you understand how it works.

First, the article itself clearly says "...within 2 months from notification...".
Thus, from the moment of notification one has 2 months time.

This leaves open the question when someone is notified, i.e. when the respective time limit is actually triggered. Rule 126(2) answers this question. Notification is effected by registered letter, which letter shall be deemed to be delivered the 10th day following its posting.

Thus under the fiction of Rule 126(2) notification is effected 10 days after posting of the registered letter, regardless of whether the letter has been received earlier. It is only then that the time limit of Art. 108 is triggered, since only then one is actually (deemed) notified.

Therefore, when calculating time limits you always have to add the 10 days first and then add the respective time limit, in the case of Art. 108 two months (or 4 months for the Grounds of Appeal). Note also that Rule 134(1) does not apply to the 10 day rule of Rule 126(2).

Most EQE candidates are fully aware of and know how to deal with this, but apparently there are still some people who believe otherwise as was the case in T2056/08. A decision to refuse an application dated 21 July 2008 was sent to the represenatative and received on 29 July 2008.

Following the law, the time limit for filing the Notice of Appeal is:
21/07/2008 + 10 days --> 31/07/2008 + 2m --> 30/09/2008 (Tuesday)

The representative argued otherwise, basically saying that one should add the 2 months first, which would result in a due date of October 1, 2008.

The Board of Appeal in R. 4 says:
Although it has become customary to refer to the appeal period as "two months plus ten days", this case shows that this is an inexact formula. The ten days are not added on after the two months period, or are calculated arbitrarily from the date of the decision or from a date two months thereafter. Rather, the ten days specify a period after which delivery and therefore notification is presumed, and the two months period stipulated in Article 108 EPC starts from the day of the presumed (if delivery has taken place within the ten days period) or actual (if delivery has been effected after the ten days period) notification. Thus, if any rule of thumb could be suggested to calculate the appeal period, it should be "ten days plus two months" rather than, as was argued by the applicant, "two months plus ten days".

Read the decision here.

OJ 2009 #4

J8/07: Change in language of proceedings ; referral to EBoA

An applicant filed a PCT application in French at the EPO as receiving office. Upon entry in the regional phase before the EPO applicant files an English translation of the PCT application and requests the language of proceedings before the EPO to be changed into English. The request was refused and applicant filed an appeal basically arguing that there is no legal provision in the EPC that does not allow a change in language of proceedings for PCT applications filed in a first official EPO language (in this case French) and later on translated into a second official language (in this case English). The Legal Board of Appeal referred the case to the Enlarged Board of Appeal with the following questions:

The following questions are referred to the Enlarged Board of Appeal:

1. If an international patent application has been filed and published under the Patent Cooperation Treaty (PCT) in an official language of the European Patent Office (EPO), can the applicant, on entry into the regional phase before the EPO, file a translation of the application into another EPO official language which then becomes the language of all subsequent proceedings before the EPO?

2. If the answer to that question is no, can EPO departments use, in written proceedings on a European patent application (or an international application in the regional phase), an EPO official language other than the language of proceedings used for the application?

3. If the answer to question 2 is yes, what criteria must be applied to determine the official language to be used? In particular, must EPO departments agree to any such request from a party or parties?

This referral has been assigned XXXX

OJ 2009, 236 : Copy of priority application

Article 1: Inclusion of a copy of the previous application in the file of a European patent application The European Patent Office shall include free of charge in the file of a European patent application a copy of the previous application from which priority is claimed if the previous application is:

(a) a European patent application,

(b) an international application filed with the European Patent Office as receiving Office under the Patent Cooperation Treaty (PCT),

(c) a Japanese patent or utility model application,

(d) a Korean patent or utility model application,

(e) a United States provisional or non-provisional patent application.

This decision shall enter into force on 1 April 2009 and replaces the decision dated 12 July 2007 on the filing of priority documents (Special edition No. 3, OJ EPO 2007, B.1).

The above text is included in the OJ 2009 Summary available from the download area.