Bits and pieces

T1423/07 : Double Patenting
The Blogs EPLaw and K's Law report recent Board of Appeal decision T1423/07 concerning the subject of double patenting. In reason 2.3.2 the Board basically says it will not follow the reasoning applied in T 0307/03. You may want to annotate your Guidelines, C-IV 7.4 (April 2010 version)

New Guidelines
This should be "old news", yet for those who are not yet aware : The new version of the Guidelines is available from the EPO Website, click here.
You can order a paper copy at the EPO, yet I recommend you download, print and bind it yourself as an A5 booklet, see here.

CEIPI Courses for the EQE
The Official Journal provides an overview of EQE courses that are organised by CEIPI, click here.

T 2017/07 : Extension of protection conferred

This case, which recently published, is an example of how things can go very wrong for a patent proprietor when claims directed to compositions which contain both open language (comprising) and generic terms of the "Markush type" have to be amended.

To refresh the memory, Article 123(3) EPC reads:
"The European patent may not be amended in such a way as to extend the protection it confers."

In this particular case claim 1 as granted reads:

"A hair dye composition which comprises
                 (A) an acid dye and
                 (B) an alkylene carbonate having 3-5 carbon atoms in total,
                 wherein the content of (B) is 0.5-50 % by weight
                 [..]"

During opposition this claim was amended to read :

"A hair dye composition which comprises
                 (A) an acid dye and
                 (B) an alkylene carbonate having 3-5 carbon atoms in total,
                 wherein the content of (B) is 0.5-50 % by weight,
                 the alkylene carbonate being propylene carbonate
                 [..]"

At first sight such a claim seems acceptable. However, the opponent and the Board further examined the case and found that by limiting the claim to a species of the genus "carbonate" at the same time maintaining the "comprising" language the scope of protection was in fact not limited but extended. The Board basically reasons that because of the "comprising" nature of the claim the hair dye may still contain carbonates falling within the genus "carbonate having 3-5 carbon atoms in total". As the amount of these further carbonates is not defined in the claim, one may end up with a total of "carbonate" well over 50%. This would result in a broader protection than the protection conferred by the claim as granted.

The Board of Appeal formulated the following headnote :

A composition which is specified in a claim to comprise a component in an amount which is defined by a numerical range of values is subject to an implicit proviso excluding the presence of that component in an amount outside of that range.


An amendment restricting the breadth of that component, for instance by narrowing down a generic class or a list of chemical compounds defining that component, has the consequence of limiting the scope of this implicit proviso.


A composition which is defined as comprising the components indicated in the claim is open to the presence of any further components, unless otherwise specified. In a claim directed to such an openly defined composition, the restriction of the breadth of a component present therein may have the effect of broadening the scope of protection of that claim, with the consequence that in opposition/appeal proceedings such amended claim may extend the protection conferred by the granted patent (Article 123(3) EPC).

To me the decision makes sense, but at the same time I have to admit that this is a scenario I have never considered before when drafting claims.

T 0961/09: Legal framework w.r.t. Article 76(1)

T 0961/09 and T 0962/09 relate to decisions by the Examining Division refusing a divisional application for non-compliance with Article 76(1). To refresh the memory, Article 76(1) reads:

A European divisional application shall be filed directly with the European Patent Office in accordance with the Implementing Regulations. It may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed; in so far as this requirement is complied with, the divisional application shall be deemed to have been filed on the date of filing of the earlier application and shall enjoy any right of priority.

In both decisions, the Board of Appeal summarizes the legal framework with respect to this Article :

[..]

In summary, as follows from reasons 5.1 of G 1/05 (OJ EPO 2008, 271) and G 1/06 (OJ EPO 2008, 307) the main criterion for assessing compliance of Article 76(1) is essentially the same as that applied when assessing compliance to Article 123(2) EPC. 

Thus, subject-matter of the divisional must be directly and unambiguously derivable by the skilled person from the disclosure of the earlier, parent application as originally filed, as determined by the totality of its claims, description and figures when read in context. 

Moreover, it is normally not admissible to extract isolated features from a set of features originally disclosed in combination, see T 1067/97, T 714/00 or T 25/03.

Following T 770/90, an unduly broad filed claim cannot justify new feature combinations. Nor, the Board adds, can the content of a document be regarded as a reservoir for combining features from separate embodiments, see e.g. T 296/96. 

The Board further refers to decisions T 1500/07, T 1501/07 and T 1502/07 in particular reasons 2 thereof.

Although specifically directed to Article 76(1) I'd say this is a very useful summary.

Undisclosed disclaimers, an overview of how G1/03 and G2/03 are applied

In the recent EPI Information (4/09) Andrew Rudge wrote a very interesting article titled

"The art of gracefully renouncing what's not yours - how the Boards of Appeal have applied G1/03 and G2/03 in practice".

The article gives a nice overview of  the case law with respect to undisclosed disclaimers after G1/03 and G2/03. I've said it before, but I'll repeat it yet again, the C committee may be inspired by the very strict manner in which the Enlarged Board decisions are applied and someday may introduce a claim containing an undisclosed disclaimer into the C paper. Maybe it's worth taking this article to the exam, you never know....

Read the article here

T 0756/06: Technical and non-technical features in one claim

This case concerns the way the EPO deals with claims which contain both technical and non-technical features and provides a nice summary of the case law. The Board reasons (R 4 and 5):

It is established jurisprudence that such claims are inventions in the sense of Article 52(1) and (2) EPC, but that the non-technical features cannot support the presence of inventive step (Article 56 EPC). Technical features are generally considered to be those that produce a technical effect.

In practice in such cases, one of two approaches is generally followed. 

In the first approach, e.g. apparent from T 931/95 [..] there is an initial analysis of the technical character of the features of the claim and then a consideration of the inventive step of only those features. 
This approach is typically used for inventions that are essentially business methods running on more or less notoriously known computer hardware. 

The second approach, e.g. used in T 641/00 [..] is a more conventional application of the problem and solution approach where the differences with respect to the closest prior art are determined and only those that  contribute to the technical character are considered for inventive step. 
This approach may be more appropriate where the technical part is more substantial and/or relevant prior art exists. It has the advantage that any non-technical feature known from this prior art will not appear as a difference and does not need to be considered in the subsequent steps, thus sparing the step of judging whether it makes a technical  contribution. Furthermore, this approach is less abstract since the claimed features can be analysed against concrete prior art.


You may want to print this part of the decision and take it with you to the C exam ....

New Blogs on the block

Two new Blogs have recently started, both of these may be worthwhile following in preparing for the EQE.

Salted Patent

K's Law

Happy reading !

How to read decisions ...

Subtitled: "When preparing for the European Qualifying Examination"

This article relates mainly to decisions from the Technical Board of Appeal of the European Patent Office (the "T" decisions) yet probably applies to other decisions as well. The task of knowing and learning the Articles and Rules of the EPC is already quite time consuming so you may find it helpful to try the way of reading decisions further outlined below. I used this method myself during my preparation and still use it for the purpose of this Blog.

1. Browse through the front page to see what the decision is about; Relevant legal provisions, keywords, catchword, etc.

2. Determine which kind of decision is appealed (Examining Division, Opposition Division) and find out who is who. This can be found on the next one or two pages.

3. For the time being, skip the "Summary of Facts and Submissions" and go directly to the "Reasons".

4. Start reading from the "Reasons" yet don't try to understand all the "case specific" details unless they are necessary for understanding the case, which is not always obvious by the way. Normally I just skip all the details about the case until the Board summarises and concludes on a certain aspect. From reading the conclusion it usually becomes apparent if further reading of the details is required or not (at this point you may need to go back to the "Summary of Facts and Submissions").

Tip: When legal provisions are referred to, always read these provisions (again). This will help you in getting the EPC "in your system".

5. Read through the "Reasons" for each issue. Make notes where necessary and don't forget to have a yellow marker around. Be alert when the Board reasons "beyond" the specific subject matter of the case. This is often where the Board either may create new case law or summarise established case law.

6. Scan the "Order"

That's it !

Depending on the case, the number of issues to be dealt and your experience with reading decisions this process can take anywhere from 5 - 60 minutes.

The question that may arise is whether you have to read a lot of decisions in preparing for the EQE. I don't have the definitive answer to that, yet I do advise you to read at least a few (whatever that means). Of course the EPO case law book and many other resources provide overviews and summaries of (established) case law, all of which can be used. I personally did not find the case law book very suitable for studying and used "Visser" and (to a lesser extent) "Hoekstra" as my main sources. I have not seen/tried any other sources by the way ...

Hopefully in addition to what is already out there you can use the case law summaries I post on this Blog every now and then. Likewise the French "European Patent Case Law Blog" provides summaries and discussion of the Boards of Appeal case law.

R 0007/09: The first review under Article 112a with succes for the petitioner

This is the first case where a petitioner was succesful before the Enlarged Board to the extent that his appeal case was re-opened.

In short, the petioner did not receive the grounds of appeal as put forward by another party. The Board of Appeal did not summon the parties to oral Proceedings as the other party only requested Oral Proceedings as an auxiliary request. The Board then decided on the case.

The petitioner argued that his right to be heard was infringed as he was unable to comment on the grounds of appeal put forward by the other party.

The EPO was not able to establish that these grounds of appeal in fact reached the petitioner (see Rule 126(2)) and finally concluded that the petitioner's rights under Article 113(1) therefore indeed had been infringed.

The case itself seems quite straightforward, read it here.
Further comments, see here.

T 0051/08: Res iudicata and divisionals

Art. 111(2) first sentence reads:

If the Board of Appeal remits the case for further prosecution to the department whose decision was appealed, that department shall be bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same.

The meaning of the legal term res iudicata is old and well-established: it defines "...a matter finally settled by a Court of competent jurisdiction, rendering that subject matter conclusive as to the rights of the parties and their privies" (see Black's Law Dictionary, 5th Edition). Such a final judgement by a court of competent jurisdiction therefore constitutes an absolute bar to a subsequent legal action involving the same claim, demand or cause of action, and the same parties or privies (T 934/91, OJ EPO 1994, 184, point 3 of the reasons). Once a final judgement has been handed down, subsequent judges who are confronted with a suit that is identical to or substantially the same as the earlier one and between the same parties, are prevented

from deciding on it a second time.

In T167/93 (headnote) the Board of Appeal said that a decision of a Board of Appeal on appeal from an Examining Division has no binding effect in subsequent opposition proceedings or on appeal therefrom, having regard both to the EPC and 'res iudicata' principle(s).

This decision is silent with respect to the situation where an applicant files a divisional and wants to pursue subject matter in this divisional application whereas a decision in appeal has already been taken for the same subject matter in the parent application.

Such a situation was subject of decision T 51/08. The Board reasons (r 3.1) that a divisional application gives the applicant, within certain limits, the possibility to pursue the same subject matter as in the parent application. Since the aim of the res iudicata maxim is to avoid relitigation of the same subject matter by the same parties, it must inevitably apply to a divisional application.

and in r 3.3:

[..]while it is true that Article 111(2) EPC 1973 provides for the binding effect of a judgment only for the decided case, the general principle of res iudicata goes beyond this and aims at avoiding any subsequent ruling on the same subject matter in other proceedings between the same parties.

The Board thus come to the conclusion as nicely summarised in the catchword :

Subject matter on which a final decision has been taken by a board of appeal in the parent application becomes res iudicata and cannot be pursued in the divisional application.

In addition the Board concludes in the same catchword that :

If the statement setting out the grounds of appeal in a case does not go beyond submitting and arguing for a set of claims which constitutes such subject matter, the appeal is not sufficiently substantiated.

My feeling is that some day this case may be part of a D1 question....

Read the decision here.

T 0700/05: Bringing a translation into conformity under Art. 14(2) EPC 1973

Article 14(2) EPC 1973 relates to applications filed at the EPO by a natural or legal person having their residence or principal place of business within the territory of a Contracting State having a language other than English, German or French. Such applicants may file an application at the EPO in the official language of that Contracting State, but then need to file a translation into an official language of the EPO.

Article 14(2) EPC 1973 states in its last sentence that "throughout the proceedings before the European Patent Office, such translation may be brought into conformity with the original text of the application".

This provision has been changed in EPC 2000 under which a European Patent application may be filed in any language.

In this case a Japanese applicant filed a PCT application in Japanese at the Japanese Patent Office designating the EPO. Upon entering the regional phase, applicant filed a translation in English.

During opposition the proprietor finds out that there was an error in the translation and requests correction.

The Board of Appeal first establishes that the provisions of EPC1973 apply. The Board then says the following (reason 4) :

The international patent application [..] was filed by an applicant having its place of business in Japan. The international application designated the European Patent Office [..] and was thus deemed to be a European patent application pursuant to Article 150(3) EPC 1973. A translation into English of this international application was provided to the EPO, as prescribed by Article 158(2) EPC 1973 in conjunction with Article 14(1) EPC 1973.

Taking into account that Euro-PCT applications are deemed by Article 153(2) to be European applications and the principle that they thus must be treated as favourably as applications made in a Contracting State, a PCT application originally filed in Japanese must be treated in the same way as an application filed in the language of a Contracting State which language is not an official language of the EPC. The provision of Article 14(2) EPC 1973 must thus be applied by analogy to allow also the translation into English of an original PCT application in Japanese to be brought into conformity with the original Japanese text of the application throughout the proceedings before the European Patent Office, i.e. also including opposition and appeal proceedings.

To me this is a bit of a strange decision. For example, take the situation where there were a Spanish and a Mexican applicant. Both applicants have their mother tongue in Spanish, which is a publication language under the PCT.

Both applicants could have filed a direct European Patent Application (Art. 58). However, only the Spanish applicant was allowed to file his application in Spanish, whereas the Mexican applicant needed to file in French, German or English. Thus, the Spanish applicant could have brought (or can bring) his translation into conformity under Article 14(2) EPC 1973, whereas the Mexican applicant could/can not unless he had first filed a PCT application in Spanish and then entered the regional phase before the EPO.

Maybe this is established practice of the EPO, or maybe I'm missing the point, but from this decision one may draw the conclusion that applicants from non-contracting states had better filed a PCT application (in a publication language of the PCT) rather than a direct European application if they wanted or want to rely on the provision of Article 14(2) EPC 1973 last sentence.

Anyway, under EPC 2000 this is no longer an issue as direct European Applications may now be filed in any language.....

Read the decision here.

T 2321/08 continued...

The Blog "European Patent Case Law" noticed an interesting development concerning this case.

The Examining Division, in a communication undert Art. 94(3) following the order of the Board of Appeal, openly comments on this decision and argues why this decision is either incorrect, should not be followed and/or why the issue at hand should possibly be dealt with by the Enlarged Board.

Click here for the European Patent Case Law Blog. (In case you have difficulty with reading French, there is a translation option in this Blog that works quite well. Further, you can also download the communication directly from this Blog.)

Click here for an earlier post on this decision.

T 1847/06: Another undisclosed disclaimer not allowed

When I was in Strassbourg earlier this year (CEIPI D course) one of the tutors warned us to stay away from undisclosed disclaimer as "it could only get you into trouble".

At that time I just took these words for granted and focussed on studying for the EQE. After the EQE I started this Blog and since then I try to pick out the interesting decisions as published regularly on the EPO website. As such, this is the 3rd time in about 3 months that a decision concerns such undisclosed disclaimers, in which indeed the proprietor of the patent got into trouble and lost a request or even his patent. See also T440/04 here and T 0107/07 here.

The present case is yet another variant of how things can go very wrong. The proprietor in appeal filed requests wherein claim 1 contains an undisclosed disclaimer, which was drafted generally as follows:

1. Use of a [..] stem cell [..] to screen [..] provided that said screening does not comprise [..]

The disclaimer was said to disclaim the subject matter of a 54(3) document.

The Board of Appeal (see Reason 13) first considers that this 54(3) document indeed anticipates the claim when read without the disclaimer. However, the Board of Appeal does not find a basis in this document for the broad "comprising" language as used by the proprietor in the disclaimer.

For this reason the Board considers that the disclaimer introduced into claim 1 extends beyond the disclosure of the 54(3) document and, therefore does not meet the requirements of G1/03. Consequently the introduced disclaimer offends against Article 123(2).

So, the lesson (I believe) to be learnt from this case is that when you have to introduce an undisclosed disclaimer, for example in the B exam, or you have to attack a claim in the C exam containing such a disclaimer, always check if the disclaimer does not extend beyond the disclosure of the document that contains the disclaimed subject matter.

If the disclaimer so extends you have probably drafted the wrong disclaimer in your B exam, or you can attack the respective claim undert Art. 123(2) in the C exam. Note that (as was the case in T440/04) if you conclude that the disclaimer does not extend beyond the contents of the "disclaimer document" this is still no guarantee that the claim (B exam) is correct or cannot be attacked (C exam). It could still be the case that the disclaimer disclaims "too little".

Have a good weekend ...

Who is the skilled person ?

The EPC does not have any provision defining the person skilled in the art, or skilled person in short. Yet this person appears to be a quite important character for the purpose of applying the EPC. For example, the skilled person is important if not crucial for determining presence of an inventive step, Article 56. Most EPC study books provide a summary on what the skilled person is all about. During the working sessions of the 14th European Patent Judges' Symposium Graham Ashley, member of a Technical Board of Appeal EPO presented an article providing yet another summary.

This summary is well hidden in the in Special Edition 1 of the Official Journal 2009, yet may be interesting reading material. Like other summaries, the article discusses who or what the skilled person is (for purpose of the EPC) and provides quite a few references to the Case Law.

Unfortunately it is not possible to extract only this article, but rather you would

have to download the whole Special Edition. Anyway, the article can be found on pages 94 -101.

Below is the summary by the author of this article :

Summary (dots added by EQETools)

The skilled person (or persons) of the EPC is

• not real,
• being of average ability for his field
• but having exhaustive common knowledge and aware of all things that are not technical.
• He is a legal creation
• whose purpose is to assist in providing a more objective approach to the assessment of inventive step and other provisions of the EPC.
• He certainly does not cut an athletic figure,
• and whilst being able to vault the bar of common knowledge, raising it any higher would be beyond his capability.

You can download the Special Edition 1/2009 here

Happy reading !

T 0069/07: Don't forget to call....

Article 6 of the Code of Conduct of the European Patent Institute, of which Professional Representatives are obligatory a member reads :

"In all dealings with the European Patent Office and its employees, a member shall act courteously, and shall do everything possible to uphold the good reputation of this Institute and its Members."

In this particular case a party decided on the day before not to attend Oral Proceedings (before the Board of Appeal) taking place the next day. However the representative did not inform the EPO about this non-attendance so that obviously the Board of Appeal did not become aware of it on forehand.

During (or just before the actual opening) the Oral Proceedings the Board allowed waiting some time for a possible small delay in arrival. Then, later on the Board had the registrar telephone the Professional Representative, who only then informed the registrar of the non-attendance.

The Board then says (Reason 1.4 and 1.5) :

"The representative of the respondent had sufficient time to inform the Board of its intended non-appearance at the oral proceedings, i.e. by informing the Board by telephone immediately after the decision not to attend was taken. This would have avoided that the other party and the Board first of all courteously waited for the representative of the respondent in case he had unintentionally been delayed, and then that the registrar of the Board had to carry out enquiries to establish if it was intended that the representative would attend the oral proceedings."

"The facts of [..] T 954/93 [..] were similar to those of the present case in that a party did not appear at the oral proceedings without informing the Board beforehand, causing telephone calls and a delay in the start of the oral proceedings. In that case the deciding board considered that the actions of the representative were "reprehensible" [..].

The present Board agrees with that decision and considers that the views of that Board also apply in the present case."

In other words, it seems the Board was "not amused" ...

Read the "code of conduct" here.

Not an important decision for the EQE by the way .....

T 0107/07: Undisclosed disclaimer not allowable

Again an example of the danger of introducing undisclosed disclaimers. See also T440/04 reported earlier on this Blog for another example.

This case concerns an opposition appeal against EP 0 684 304 concerning a cleaning composition.

During examination prior art under Art. 54(3) was cited against the corresponding patent application. In response the applicant introduced an undisclosed disclaimer in claim 1, disclaiming the subject matter of this 54(3) prior art. A patent was then granted.

Opposition was filed and the patent was maintained in amended form. Claim 1 as maintained differed from claim 1 as granted yet contains the undisclosed disclaimer.

In it's decision the opposition division held that altough G1/03 was not yet published at the time of introduction of the disclaimer, the principles of legitimate expectations did not prevent the application of this decision retrospectively. Further, the disclaimer was found to be drafted in accordance with the criteria of G1/03, hence the claim complied with Art. 123(2) EPC.

The opponents argued that the disclaimer removes more than necessary so that the principles of G1/03 were not met. The opposition division did not agree and found (r. 3.3):

"that Headnote II.2 of G 1/03 should be understood in the light of paragraph 3 of the Reasons for this decision. Here it is explained that the disclaimer should not remove more than necessary to restore novelty because the necessity for a disclaimer is not an opportunity for the applicant/proprietor to reshape his claims arbitrarily. On the other hand the requirements of conciseness and clarity of Article 84 also apply to claims containing disclaimers; a balance has to be struck between the interests of the applicant and of the public and this may necessitate adapting the terminology of the disclaimer in order to respect these requirements. This balance is also mentioned in the Guidelines, C-VI 5.3.11."

[..]

"the opposition division considers that the wording of the disclaimer is clear and concise and that the requirements of Article 84 are met. Moreover the disclaimer does not amount to an arbitrary reshaping of the claim as it uses precisely the wording of [..]. The opposition division therefore concludes that the balance mentioned above has been respected in the present case.

Both the proprietor and the opponents were not happy and filed an appeal.

The opponents argued that the 54(3) document that was cited during the examination proceedings was in fact not novelty destroying when the claim would have been read without the disclaimer.

The Board of Appeal then summarises the established case law, in particular G1/03 and states (r 1.1.2) :

"that the introduction of a disclaimer based on a state of the art is not allowable if said state of the art does not destroy the novelty of the claim in question (see G 1/03, point 2.6.5) [..]"

"For example, G 1/03 underlines that a disclaimer may serve exclusively the purpose for which it is intended and nothing more and that, in the case of a disclaimer concerning conflicting pplications, its purpose is to establish novelty with respect to a prior application in the sense of Article 54(3) EPC. Therefore, if a disclaimer has effects which go beyond its purpose as stated above, it is or becomes inadmissible (point 2.6.5 of the reasons)."

The Board then looks again at the 54(3) prior art and concludes that this prior art does not anticipate the subject matter of claim 1 when read without the disclaimer. Hence the disclaimer was found unallowable.

The proprietor tried to argue that the disclaimer does not have "bearing on the technical information of the application and does not contribute to the technical teaching of the claimed subject-matter; its addition to claim 1 thus cannot be considered to contravene the requirements of Article 123(2) EPC for the reasons given in G 1/93 and G 1/03 (see for example, G 1/93, headnote 2 and G 1/03, point 3 of the reasons)." (r 1.1.4)

The Board of Appeal does not agree and confirms that G1/03 specifies that a disclaimer excluding a conflicting application, only excluding subject-matter for legal reasons, is required to give effect to Article 54(3) EPC and has no bearing on the technical information in the application (points 2.1.3 and 3 of the reasons).

The disclaimer in this case does not comply with the requirements listed in G 1/03 for an allowable disclaimer since it has been drafted on the basis of a document which cannot destroy the novelty of the claimed subject-matter.

With respect to G1/93 the Board concludes that the disclaimer modifies the technical characteristics of claim 1 hence that this disclaimer constitutes an amendment that contravenes Art. 123(2) EPC. (See reason 1.1.4 for more details)

All other requests also contained the disclaimer, and as a result the patent was revoked.

I did not study the subject matter of the claims and the prior art in detail, but removal of the disclaimer was probably not an option for the proprietor in this case, because such an amendment would have contravened Art. 123(3) as extending the protection conferred. So, effectively the proprietor may have been caught in the Art. 123(3)-(2) trap.

The lesson learned from this case is (again) that one should be extremely careful when introducing undisclosed disclaimers in a patent application. In some of the recent A and B chemistry papers introduction of such disclaimers has been required (I don't know if this was the case of E/M papers). Some day the C committee will probably build a similar case in a C paper.....oops I may just have inspired them to do so.

In any case, be prepared and study G1/03 well before sitting the EQE.

Read the decision here.

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.

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.

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