T1465/05: Classic case of re-establishment of rights

I found this case during further analysis of T1304/04 .

An applicant appealed against the decision to refuse a patent application. All documents were filed in due time, however due to an error the appeal fee was not paid. As a consequence the appeal was deemed not filed (Article 108) and the applicant was so notified.

It appeared that the "well instructed, permanently supervised and reliable" assistent of the professional representative made the error probably by putting the payment order in a wrong "pigeon-hole" (as it is referred to in the decision).

Applicant requested re-establishment and the Board applied the established case law:

R 1.3: [..] due care is considered to have been taken if non-compliance with the time limit results from an isolated mistake within a normally satisfactory system for monitoring time limits (see Case Law of the Boards of Appeal, 5th edition, 2006, section VI.E.6.2).

In a case of a culpable error on the part of an assistant, this criterion is considered to be met, if the professional representative is able to show that he has chosen for the work a suitable person properly instructed in the tasks to be performed, and that he has himself exercised reasonable supervision over the work (see Case Law, supra, section VI.E.6.3.4(a), in particularJ5/80, OJ EPO 1981, 343).

The professional representative was able to show all due care and the appeal was found admissible.

Nothing special about this case, yet by reading the same articles, rules or case law over and over again you'll get the subject better in your system which saves you time when sitting the EQE. At least that's the way it works for me....

T1304/07: Appeal or re-establishment of rights?

Rule 126(1) EPC reads:

(1) Decisions incurring a period for appeal or a petition for review, summonses and other such documents as determined by the President of the European Patent Office shall be notified by registered letter with advice of delivery. All other notifications by post shall be by registered letter.

(2) Where notification is effected by registered letter, whether or not with advice of delivery, such letter shall be deemed to be delivered to the addressee on the tenth day following its posting, unless it has failed to reach the addressee or has reached him at a later date; in the event of any dispute, it shall be incumbent on the European Patent Office to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee, as the case may be.

(3), (4) Not shown.

In this case the Opposition Division had sent an invitation to file observations to the patent proprietor. The proprietor did not respond to this invitation and the patent was revoked as not complying with Art. 84. The proprietor filed an appeal arguing that he did not receive the communication in question, so that it was not his fault that the time limit for answering this communication was missed. The EPO provided evidence that the letter in fact was delivered to the adressee, thereby fulfilling its duty under R126(2) last sentence. As a consequence the appeal was dismissed.

The Board in R4: As the piece of mail containing the official communication was provably placed in the addressee's PO box, it is irrelevant for the validity of the notification, whether the communication then also reached "the sphere of responsibility" of the addressee's internal post services [..].

The communication that was apparently not received was dated 08/02/2007 and the decision by the Opposition division was dated 21/06/2007. Based on this information I wonder if the proprietor could also have requested re-establishment of rights under Art. 122 EPC. (Removal of cause of non compliance then being the notification of the decision by the Opposition Division).

By doing so he would have had support by established case law in respect of the "all due care" criterium.

J2/86: An isolated mistake of an otherwise properly functioning administration is an admissible ground for re-establishment.

From reading the decision of the Board of Appeal this might have been the situation in this case.

Just a thought, please feel free to comment ....

T 2321/08: Obligation to acknowledge prior art

This interesting case has already been discussed by the French Blog of Laurent Teyssedre, so I'll keep this very brief.

The situation was such that an applicant did not cite (relevant) prior art in his application as filed, whereas he was very aware of such relevant prior art. The Examining Division therefore refused the application as not complying with Rule 42(1)(b) EPC. Applicant appealed and the Board of Appeal concluded that this refusal was not justified.


Below is the catchword in English:

1. Rule 27(1)(b) EPC 1973, or equivalent Rule 42(1)(b) EPC 2000, does not put a stringent obligation on the applicant to acknowledge prior art known to him, and to cite documents known to him reflecting this prior art, already at the time of filing the application.

2. No requirement of the EPC prohibits amending an application in order to meet the provisions set out in Rule 27(1)(b) EPC 1973 or Rule 42(1)(b) EPC 2000.

The Board of Appeal refers to G1/05 reasons 3.2 and 3.4. These reasons have been added to the G summary.

As far as relevant and entirely correct, not mentioning relevant prior art in procedures before the USPTO may be regarded as inequitable conduct, which may result in revocation of the patent during litigation proceedings. This is probably a bridge too far to be of relevance for the EQE, yet it is important if your clients file patent applications in the USA.

Read the entire decision here.

Official Journal #6, 2009

Not a lot of new EQE-relevant material in this Official Journal. In summary:

Accession of San marino to the EPC (already reported here).
Accession of Lithuania to the London Agreement (already reported here).

OJ 2009, 400
List of holidays observed by EPO filing offices and the national patent authorities in 2009

The Institute for Industrial Property (INPI) in France has informed us that this year, in addition to the list of holidays published in OJ EPO 2009, 71, it will further be closed on the following days:
Friday, 22 May 2009
Monday, 13 July 2009

Under Rule 134(1) EPC, periods expiring on a day on which at least one of the filing offices of the EPO is not open for receipt of documents are extended to the first day thereafter on which all the filing offices are open for receipt of documents. Under Rule 134(3) EPC, the provisions of Rule 134(1) EPC apply mutatis mutandis where acts are performed with the
central industrial property office or other competent authority of a contracting state.


The OJ 2009 Summary will be updated and published in the download are.

T 431/07: Insufficient disclosure

In this case a proprietor filed an appeal against the decision of the Opposition Division to revoke the patent based on lack of inventive step and insufficient disclosure.

With respect to the aleged insufficient disclosure claim 5 as granted is of importance. This claim reads:

5. Universal colouring compositions according to any one of the preceding claims, characterized in that they have a viscosity of 2.0-10.0 poises at 20°C.

The specification itself did not provide any information as to how this viscosity was measured and which type of measurement equipment was used.

The subject matter of claim 5 was incorporated in claim 1 of several requests.

The proprietor (appellant) argued that the skilled person in this specific field would measure this viscosity using a so called "Stormer viscosimeter". However, the respondent filed evidence that such a viscosimeter would not provide measurement results in the absolute unit "poises" but rather in relative values.

The board then reasons (R 2.2.5) "in view of the numerous techniques and devices used in the state of the art to measure viscosity, it amounts to an undue burden for the person skilled in the art if the latter is left without any clear guidance as to how to prepare compositions which meet the required range of viscosity."

Following the established case law (e.g. T14/83, OJ EPO 1984,105) the Board concludes that the invention as claimed has not been disclosed in a manner sufficiently clear and complete within the meaning of Article 100(b) EPC.

This decision may seem straightforward, however in numerous A exams (at least in the chemistry field) candidates have had to put clear definitions in the claims of measurement methods (or other features).

From what I learned some guidance (but always judge for yourself!) may be the following:

In the exam look for sentences like "as is a generally known", or "known to the skilled person" or any similar language in the letter of the client. If you find these sentences in relation to a specific feature it is normally not necessary to put a clear definition in the claim.

On the other hand, in the absense of such language, if you find clear definitions for certain claim features you have to put these definitions in the claim and not only in the description.

Read the decision here.

Amended Rule 36: Translation issue resolved for divisionals

Note: This post relates to new Rule 36, which will enter into force 1 April 2010!

According to Article 76(1) a divisional application may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed. The divisional application shall be in the language of the proceedings for the earlier application, see present Rule 36(2).

Suppose now an applicant files a first application in Greek, which is allowed under Article 14(2), and within the period of Rule 6(1) he files a translation in English. According to Article 14(3) English will therefore be the language of proceedings.

The applicant may however bring the translation into conformity with the application as filed, which was the application in the Greek language. Thus, if during the course of proceedings translation errors are found, such errors may be corrected.

Suppose now that the same applicant files a divisional application before having made any correction in the first application. This divisional should be filed in English according to present Rule 36(2). This has the effect that the language of the application as filed for the divisional is English and not Greek. Consequently, the applicant will not have the opportunity to bring the divisional application into conformity with the earlier application in Greek.

This can have the effect (in a worst case scenario) that the divisional application, due to an error in translation, may be refused or revoked.

This rather strange situation has been resolved by the amendment to Rule 36(2) which allows the divisional to be filed in the language of the earlier application (i.e. in Greek). By doing so, the language of the application as filed will be the Greek language and consequently the English translation may be brought into conformity during the course of proceedings before the EPO.

There's a lot more to say about the Rule changes anounced in OJ 2009 #5 but the above situation may be a good candidate for the D exam....

PCT Newsletter 2009 #6

The June 2009 issue of the PCT Newsletter is available for download, click here.

Several rule changes will enter into force from July 1, 2009. A document with all the changes can be downloaded here and a presentation (Powerpoint) here.

Make sure you update your PCT legal texts !!

With effect from 1 June 2009 the French National Institute of Industrial Property (INPI) has withdrawn it's reservation under Rule 26bis.3(j). As a result Rule 26bis.3(a) to (i) apply with respect to the INPI in it's capacity as Receiving Office. The INPI further notified that it will apply the "due care" criterion".

The practical advice and some of the information above has been copied to the PCT Newsletter 2009 Summary (which will be available from the download area on short term).

Happy reading !

Printing and commenting

Just as a reminder, you can print the posts on this Blog without the sidebars by first clicking on the title of a post, then by clicking the "print this post" link, which you find at the bottom. Alternatively you can print by using the  button.

In addition this is also the place where you can comment on my posts.

Petition for review; Snippets from R5/08

For those of you who do not yet know, decisions made on petitions for review under Article 112a EPC are referred to with an "R". Now that we've got that settled here's the more serious part of this post ...

Let's start with a short summary of these review proceedings including some legal basis:

Under Article 112a(1) any party to appeal proceedings adversely affected by the decision of the Board of Appeal may file a petition for review of the decision by the Enlarged Board of Appeal. The petition may only be filed on the grounds under Article 112a(2) and Rule 104 and needs to be filed within two months of notification of the decision of the Board of Appeal, see Article 112a(4). The petition is deemed not filed if the required fee is not paid in due time (Rfees 2.11a).

Failure to meet the time limit is excluded from further processing according to Article 121(4), however re-establishment of rights may be requested under Article 122 and Rule 136. Of course all due care needs to be proven.

The actual procedure is basically a 2-step procedure, see See Rule 109(2).

During the first step the Enlarged Board consisting of two legally qualified members and one technically qualified member shall examine all petitions for review and shall reject those which are clearly inadmissible or unallowable; such decision shall require unanimity.

During a second step the Enlarged Board of Appeal consisting of four legally qualified members and one technically qualified member shall decide on any petition not so rejected.

If the petition is allowable, the Enlarged Board of Appeal shall set aside the decision and shall re-open proceedings before the Boards of Appeal, see Article 112a(5). If re-opened the Enlarged Board of Appeal shall order the reimbursement of the fee for a petition for review, Rule 110.

Case R5/08 was one of the cases which was not clearly inadmissible or unallowable.

One of the issues that was dealt with in this case was the meaning of the word "taken" in the transitional provisions, which say that Article 112a shall apply to decisions of the Boards of Appeal taken as from the date of its entry into force.
The petitioner basically wanted to have 2 decisions reviewed, one of them being pronounced during oral proceedings on 18 October 2007 (before entry into force of EPC2000) and notified on 29 April 2008 (after entry into force of EPC2000). The petitioner argued that the word "taken" should be understood to mean "notified" and hence that this first decision could be subject to the petition for review procedure. Although the decision contains some interesting reading material and discusses the earlier decision G12/91 in some detail, this post is limited to reproduction of the summary of the Enlarged Board :

R. 21: In summary, none of the petitioner’s arguments outweigh the very clear direction pointed by decision G 12/91 to the interpretation of “taken” as the date a decision given orally is pronounced. Any other interpretation would lead either to a deceptive meaning of “taken” or the retrospective delay of a board’s decision’s irreversible effect by the later filing of a petition. Accordingly, the Enlarged Board finds that the first decision dated 18 October 2007 was taken on that date for the purposes of the transitional provisions and therefore Article ll2a EPC cannot apply to it. Thus the petition is, as regards that decision, inadmissible.

In reasons 28-34 the Enlarged Board further explains the 2 step character of the petition for review procedure because according to the Enlarged Board, "the respondent wholly misunderstood the two distinct stages ..." (The respondent complained that he was not involved during this first step and that therefore his right to be heard was denied.)

R. 30: [..]in the first stage of petition proceedings, parties other than the petitioner are not to be involved in the proceedings. Such other parties are beyond doubt parties [..], but they are not to be involved. So long as they are not involved, they have no right to be heard and thus no complaint [..]of a denial of the right to be heard can arise.

R. 31: [..] Rule 109(3) EPC [..] says quite clearly “The Enlarged Board of Appeal composed according to paragraph 2(a) shall decide...”. As would only be expected of any judicial decision, the only persons involved in the decision are the appointed decision-makers who, under Article ll2a and Rule 109(2) (a) and (3) EPC, are three members of the Enlarged Board. Accordingly, the expression “without involvement of the parties” means without the parties’ involvement in the proceedings. That is the straightforward and common sense interpretation of Rule 109(3) EPC and the only interpretation it can bear.

So, I hope this post clarified a bit the review procedure for those of you who -like the respondent- "wholly misunderstood" before.

Read entire the decision here

G Summary updated

An updated version of the G summary is available for download. Changes are minor and concern among others addition of (some) keywords, correction of typo's, layout changes and introduction of references to EPC2000.

Download it here

EQETools Blog reached 1000 pageviews

Today the EQETools Blog reached a total of over 1000 pageloads. 

Together with a significant number of returning visitors this strengthens me to keep going with this Blog and to further expand it with more tools, case law, articles on specific EPC topics and more ...

A special thanks to "Le blog du droit européen des brevets" for mentioning the EQETools Blog in their May 31 post !

Cheers !

T 716/06: Hearing of a witness

This case concerns an opposition based on Article 100(a) wherein a lack of novelty was said to exist based on inter alia public prior use for which the opponent offered a witness to be heard.

According to Article 117(1)(d) hearing a witness is considered a means of giving or obtaining evidence in proceedings before the EPO. Under Rule 117 the EPO shall take a decision in the case it considers it necessary to hear a witness.

The Opposition Division came to the conclusion that the alleged prior use was not sufficiently substantiated as to the issues what was made available to the public and when and how it was made available. The witness was not heard.

Using the words of the Board of Appeal : The Opposition division has apparently either ignored or overlooked the Opponent's offer to hear the witness named in the notice of opposition on certain details of this alleged prior use.

The Board then explains the principles regarding witness hearing with respect to public prior use :

There is normally no need for the competent department to hear a witness on an alleged prior use, if it does not evaluate differently the facts and arguments brought forward by the Opponent in support of the claimed prior use. 

There is also normally no need to hear a witness to testify that an alleged prior use was made available to the public, if this alleged prior use is cited only in support of lack of novelty and the department of the EPO is of the opinion that the alleged prior use is in fact not a novelty destroying state of the art, since establishing availability to the public in that case would have no influence on the decision to be taken.

By contrast, in the present case the Opposition division was of the opinion that not only the claimed public prior use was not established but also this public prior use, even if established, would not be a novelty destroying state of the art, because the feature [..] was not disclosed therein. 

However, the Opposition division did not consider the Opponent's offer to hear the same witness on these two issues. 

In other words, the witness was offered to testify on those facts which specifically concerned the questions of "when and how" and "what" was available to the public, i.e. questions upon which the decision turned.

Given that hearing witnesses is one of the means of giving or obtaining evidence according to Article 117 EPC 1973, in ignoring the Opponent's request to [..] the witness, even if due to an oversight, the Opposition division has disregarded oral evidence offered on these two issues and thus, infringed the Appellant's right to be heard (Article 113(1) EPC 1973). This constitutes a substantial procedural violation.

The decision under appeal is set aside and the case is remitted to the Opposition Division.

Catchword:

If a request is made by an opponent to hear a witness on an alleged public prior use and on the disclosure of a certain feature by this prior use, the competent department of the EPO must as a rule grant this request before deciding that the alleged public prior use is neither established nor a novelty destroying state of the art because the feature in question is not found to be disclosed therein.

Presentation on inventive step

During PATLIB 2009 an employee of the EPO gave a presentation on the assessment of inventive step by the EPO. As we all know the EPO applies the Problem-Solution-Approach (PSA) and in the EQE, specifically for the B and C papers, they want candidates to show they understand and are able to apply this aproach. 

Download the presentation here....

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Downloads

By clicking the links below you can download the tools available on this website.Please let me know if one or more of the links is not working.

Tools & Articles by EQETools

Paper A tool
Read this post for more information.

Paper B tool

Read this post for more information.

D1 Timing tool CET
D1 Timing tool UK
Read this post for more information.

EPC Quickreference
Read this post for more information.

D2 Timeline template
Not a lot to say about this, yet some info here.

D2 Matrix template
Not a lot to say about this, yet some info here.

The G Summary, January 2012 edition
Read this post for more information.

Editable copy of the EPC: Articles
Download in PDF, MS Word, OpenOffice, RTF or TXT

Editable copy of the EPC: Rules in force 31/12/2009
Editable copy of the EPC: Rules in force 01/04/2010
Editable copy of the EPC: Rules in force 26/10/2010
Editable copy of the EPC: Rules in force 01/01/2011

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Summaries
Summary of the Official Journal 2009
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Summary of the PCT Newsletter 2010

Article: The Problem and Solution Approach



3rd Party Tools

Paper A Tool E/M
Based on the Paper A tool, then modified in view of the E/M paper.

EPC Keyword Guide
Read this post for more information.
Submitted October 14, 2009 by Nèstor Corominas.

EPC Flashcards
Read this post for more information.
Submitted october 26, 2009

Modified D1 timing tool CET
Modified D1 timing tool UK
Submitted January 25, 2010

Disclaimer

On this Blog I try to explain the EPC and the Boards of Appeal case law as accurate and objective as possible. That said my advice is not to trust solely on what you find here. The same goes for all the tools that are available for download. These were made with the highest care (as I used them myself ...), but there may still be some typo's or (small) other errors in the documents. If you find one, please let me know and I'll make the appropriate correction.

OJ 2009 #5

The Official Journal #5 is available for download from the EPO website.

The OJ 2009 Summary was updated with the items which (tmho) may be relevant for the EQE.

In short, the following can be found in this Official Journal:

• The EQE 2010 will be held from 2 to 4 March 2010. Complete applications must be received by the EPO no later than 17 July 2009. Candidates who sat the 2009 European qualifying examination and handed in at least one answer paper may benefit from an extended closing date: their complete application must be received by the EPO no later than 18 September 2009.
• G2/06 is published, see also the G summary
• An overview of the amendments to the Guidelines (not in the OJ summary)
• Decision to amend the Implementing Regulations R. 36(1), (2), R. 57(a) and R. 135(2). Decision enters into force April 1, 2010
• Decision to Amend the Implementing Regulations R. 63, R. 64(1), R. 69, R. 135(2), R. 137, R. 161. New Rules R. 62a and R. 70(a) are to be added. Decision enters into force April 1, 2010

Happy reading !

Books & Other study material

Books/ Study material

EQETools
Of course on the top of the list as I'm quite proud of the attention this Blog has gotten so far. I hope you like the tools that you can download here.

The Annotated EPC
Author: Derk Visser
Most candidates know this book very well. All provisions are explained and numerous references to case law can be found in this book. "Tabbing" of the book is highly recommended if you want to find something quickly during the EQE. Did anyone take a good look at the picture on the left hand corner of my Blog....exactly, that's my "tabbed"copy.

References to the European Patent Convention
Author: Jelle Hoekstra
This book (or rather these books as there are two) by Jelle Hoekstra contains a very complete list of references for each provision of the EPC.

The Cross Referenced Patent Cooperation Treaty
Author: Cees Mulder

EPC2000 guide

Author: Nicholas Fox

C Book: How to write a succesful opposition and pass paper C of the European Qualifying Examination

Key to the EPC
Authors: Stephan C. Fritz, Elisabeth K. Grünbeck, Ali Hijazi



A Complete Guide To Passing The European Qualifying Exam
And Qualifying As A European Patent Attorney:
Authors: Simon Roberts & Andrew Rudge



Procedural Law under the EPC2000
Peter Watchorn and Andrea Veronese

From the same authors:
PCT Procedures and Passage into the European Phase

Links

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