Delta Patents

T 2340/12 - What the ... is a space energy implosion unit?

Delta Patents Patent Law -



The application in this appeal case refers to a device using "space energy" for therapeutic purposes and foodstuff preparation. It was refused by the examining division for lack of sufficiency and lack of technical character. The ED further objected that the term "space energy" was not clearly defined, and that no method of measuring the energy had been described.

To overcome the deficiencies, the applicant submitted a main request in which "space energy" was replaced with the term "torsion field",  along with a number of articles and internet publications intended to establish the clarity of the new nomenclature. As regards measurement, the applicant argued that it was sufficient to be able to measure the effects of the energy on test subjects, as demonstrated by the experimental data. The ED found the experimental support to be unsatisfactory. 

The applicant also submitted three auxiliary requests - likewise involving a change of nomenclature - which were not admitted into the proceedings because of failure to prima facie address the issue of insufficiency of disclosure.

In appeal, the applicant/appellant contested the findings of the ED and questioned their competence to require experimental evidence. The Board upheld the decision to refuse the application under Art. 83 EPC and the decision not to admit the three auxiliary requests. The Board further commented that while there is no provision in the EPC according to which the grant of a patent depends on the applicant filing satisfactory experimental evidence, the provision of such evidence in order to convince the examining division or board of appeal that its findings are incorrect should be viewed as the applicant's right, rather than his obligation.




Summary of Facts and Submissions
I. The appeal lies from the decision of the examining division to refuse European patent application No. 07 833 098.
II. The application was refused by the examining division because the applicant's main request did not meet the requirements of Article 83 EPC and Rule 42(1)(c) EPC.
Auxiliary requests 1 - 3, which were filed during the oral proceedings before the examining division, were not admitted into the procedure because they were considered to contravene Rule 137(3) EPC and Rule 116(1) EPC.
III. In the reasons for the decision, the examining division held that the notion of "space energy", underlying the claimed invention, was not clearly defined. In this respect, it was stressed that its existence was neither proven nor accepted by the scientific community. The same shortcomings applied to the notion of "torsion field" presented by the applicant as equivalent to the concept of space energy. The evidence provided by the applicant in order to prove the alleged effects produced by the invention with regard to the treatment of patients or the preservation of foodstuff did not convince the examining division.
IV. The appellant requested on appeal that the decision of the examining division be set aside and that a patent be granted "on the basis of the valid claims".
In support of his arguments, the appellant filed a number of documents: F1 - F12
V. In accordance with the appellant's request, a summons to attend oral proceedings was issued.
VI. A communication informed the appellant of the provisional opinion of the board with regard to the merits of the main and auxiliary requests underlying the impugned decision.
VII. In a letter dated 20 February 2018, the appellant informed the board that he would not attend the oral proceedings.
The appellant did not comment on the provisional opinion of the board.
VIII. Independent claim 1 of the main request underlying the decision in suit filed under cover of a letter dated 18 August 2010 reads:
"1. A torsion field implosion unit comprising:
a planar structure (1) having a regular pentagonal shape;
a cubic structure (2) which is installed to be separated from an upper portion of the planar structure (1) and has a regular pentagonal pyramid shape; and
a separation structure (3) which separates the planar structure (1) and the cubic structure (2) from each other and has a smaller area than areas of the planar structure (1) and the cubic structure (2)."
Independent claim 6 of the main request underlying the impugned decision reads:
"6. An energy amplification generator comprising:
a first geometrical structure in which vertices of each of five or seven pieces of planar structures (1) having a regular pentagonal shape contact one another;
a second geometrical structure which is separated from an upper portion of the first geometrical structure and in which vertices of each of five or seven cubic structures (2) having a regular pentagonal pyramid shape contact one another; and
a plurality of separation structures (3) which separate the first geometrical structure and the second geometrical structure from each other, are installed between the planar structure (1) and the cubic structure (2) and have a smaller area than areas of the planar structure (1) and the cubic structure (2)."
As regards auxiliary requests 1 - 3 submitted, but not admitted, during the oral proceedings before the examining division:
Auxiliary request 1 differs from the main request in that the notion of "A torsion field implosion unit" in claims 1 and 3 has been replaced by "A unit for radiating a torsion field" and in that the term "An energy amplification generator" in claims 6 and 11 has been replaced by "A generator for radiating energy".
In auxiliary request 2, the term "A torsion field implosion unit comprising..." in claims 1 and 3 has been replaced by the term "A unit for radiating a torsion field, the torsion field being a force that is not gravity or electromagnetic force, the unit comprising...". Similarly, the notion of "An energy amplification generator comprising" has been replaced by the notion of "A generator for radiating a torsion field, the torsion field being a force that is not gravity or electromagnetic force, the generator comprising...".
Auxiliary request 3 differs from the main request in that the term "torsion field implosion unit" has been replaced by "unit" and in that the concept of "energy amplification generator" has been replaced by the term "generator".
IX. The arguments of the appellant, insofar as they are pertinent to the present decision, are set out below in the reasons for the decision.
Reasons for the Decision
1. The appeal is admissible.
2. Interpretation of requests
The Board interprets the appellant's request that the patent be granted "on the basis of the valid claims" as referring to the claims of the main request filed under cover of a letter dated 18 August 2010 and to the claims of auxiliary requests 1 to 3 that were filed at the oral proceedings before the examining division on 26 April 2012.
3. Main Request - Sufficiency of disclosure
3.1 It is, firstly, observed that the board does not understand how the torsion field or space energy are to be measured. In particular, it is not straightforward for the skilled person to identify which devices or systems could possibly be used for such measurements. Similarly, in the description (cf. paragraph [97]) reference is made to the frequency of the radiated space energy. In the absence of direct measurements of the torsion field or space energy, the board does not understand how the frequency of the radiated space energy could actually be measured.
With the statement of grounds of appeal, the appellant cited documents F1 to F5, suggesting that the terms used in the claims were well known in the art and that the term "torsion field" should be given the meaning recognised in these references. Moreover, the appellant claimed that over 40 000 Internet citations could be found concerning "Space Energy" in the sense of the present application and suggested that the skilled person would be able to understand the invention on the basis of these citations.
That these terms are well known in the art appears, however, questionable. Documents F1 to F5 suggest that the notion of "torsion field", also called "spin field", may be related to the spin of particles, a concept from quantum physics. Document F3 appears, in this respect, more concrete in that it associates the spin-field to the presence of spin polarisation.
It is, however, unclear from the present application what relationship exists between the claimed structure, the torsion field to whose generation it contributes, and the spin polarisation of substances. No specific Internet citation was cited which could serve to explain the concepts of torsion field or space energy. In this respect, the appellant's submissions are of no assistance in identifying how the torsion field or space energy could be somehow measured.
The applicant only refers to "indirect" measurements carried out on white rats or patients or on observations carried out on substances like milk or fruits. The Board however fails to understand how such measurements would lead to any conclusions as to the frequency of the radiated space energy. The appellant did not elaborate on the nature of these experiments or on their relevance for the claimed invention despite having been invited to do so in the provisional opinion issued by the Board. The criticisms raised by the examining division regarding the absence of a control group for the patients treated, the doubts regarding the statistical relevance of the experiments carried out, the absence of details as to the circumstances and the way the experiments were controlled, are thus justified (cf. minutes of the oral proceedings before the examining division, point 3.2.1).
3.2 The inventions also concern an "energy amplification generator". It is however unclear what relationship exists between said generator and the notion of "torsion-field" or "spin-field". The generators appear to be elaborated on the basis of the implosion units. This, however, appears to contradict the statement in F2 that the spin-spin interaction, underlying the torsion field does not carry mass or energy. This contradiction is an indication that the concepts used throughout the application are not used in accordance with their generally accepted usage and meaning.
3.3 Secondly, the appellant also did not elaborate on the relevance of documents F6 to F12 enclosed with the statement of grounds of appeal.
The board concludes that these documents neither assist the skilled person in carrying out the invention, nor make plausible the effects described in the patent application.
Most importantly, it is not established that the documents F6 to F12 relate to the claimed subject-matter.
3.4 The appellant contested the findings of the examining division regarding the absence of proof of the effects achieved by the claimed devices. It was emphasised, in this respect, that the EPC does not contain any requirements for such experimental evidence to be provided. The appellant further questioned the competence of the examining division to require such evidence.
3.5 Article 83 EPC 1973 requires that the invention be disclosed in a manner sufficiently clear and complete for it to be carried out by the skilled person. In the case of inventions in fields of technology without any accepted theoretical or practical basis, the case law of the boards of appeal has established that the application should contain all the details of the invention required for the effect to be achieved (cf. T 541/96, point 6.2). This is the direct consequence of the fact that the skilled person will be unable to rely on common and accepted general knowledge when dealing with inventions in such fields.
Concerning the burden of the proof, the following should be noted. It is not contested that it is for the organ raising the objection of lack of sufficiency to justify its view. It is, therefore, in ex-parte proceedings, up to the examining division or the board of appeal to substantiate the objection raised. A different approach would be tantamount to incorporate further conditions for the grant of a patent for which no legal support can be found in the EPC. Such objection should rely on concrete and verifiable knowledge or facts that question the reality of the effects provided for by the claimed invention. The lack of credibility may result, for example, from a conflict with established laws of physics or merely because the nature or intensity of the effects relied upon may appear rather "surprising" in view of what is generally achieved by the prior art.
It is then for the applicant/appellant to provide the arguments or evidence that convince the examining division or board to change its position. This may be achieved, for example, by way of a plausible theoretical explanation of the phenomena involved, or by providing results from experimentation or simulation. Reference is made, in this respect, to decision T 1842/06 (cf. point 3) of the present Board (in a different composition) where similar issues were discussed.
There is no provision in the EPC according to which the grant of a patent depends on the filing by the applicant of evidence that the claimed invention performs satisfactorily in the form of results of experimentation. It follows that the filing of such results is not to be seen as an obligation imposed on the applicant but, in contrast, as a right, recognised by the practice and the case law of the boards of appeal, providing the applicant with the opportunity to convince the examining division or board of appeal that it erred in its initial findings.
3.6 In conclusion, in the absence of any recognised meaning for the concepts of "torsion field implosion unit" (claims 1 and 3) or of "energy amplification generator" (claims 6 and 11), and being unable to verify by way of measurements any effect to be generated by the claimed entities, the skilled person would not be in a position to carry out the inventions, contrary to Article 83 EPC 1973.
4. Auxiliary requests 1 to 3
4.1 The examining division did not admit said three auxiliary requests into the proceedings in view of Rule 137(3) EPC and Rule 116(1) EPC.
Rule 137(3) EPC stipulates that, once the application has been amended a first time, no further amendment may be made to the description, claims and drawings without the consent of the examining division. This makes the admission of further amendments a matter of discretion for the examining division.
4.2 In accordance with the decision of the Enlarged Board of Appeal G 7/93 (point 2.6), a board of appeal should only overrule the way in which a department of first instance has exercised its discretion under the EPC if it comes to the conclusion either that the first instance department, in its decision, has not exercised its discretion in accordance with the right principles, or that it has exercised its discretion in an unreasonable way, and thus exceeded the proper limits of its discretion.
In refusing to consent to the filing of the three auxiliary requests, the examining division held that the amendments introduced in the claims of the auxiliary requests did not prima facie overcome the objections regarding the insufficiency of disclosure (Art. 83 EPC) and the failure to comply with R. 42(1)(c) EPC which had been developed with regard to the main request.
4.3 The examining division thus based its decision on the question of whether the amendments were suitable to overcome the deficiencies of the main request. The examining division hence applied the right principle when deciding on the admissibility of requests which had been filed at a particularly late stage of the examination proceedings.
In the statement setting out the grounds of appeal, the appellant did not comment on the decision not to admit auxiliary request 1 to 3 into the proceedings.
4.4 As a result, the board has no reason to overrule the way in which the examining division exercised its discretion in not consenting to the amendments under Rule 137(3) EPC.
4.5 Article 12(4) RPBA empowers the boards to refuse to admit requests which were not admitted in the first instance proceedings.
In the present case, admitting the auxiliary requests 1 to 3 upon appeal would mean that the examining division's discretion would be overruled.
As shown above, the board has no reason to overrule the way the examining division's exercised its discretion with respect to said requests.
Consequently the auxiliary requests 1 to 3 are not admitted into the appeal proceedings.
Order
For these reasons it is decided that:
The appeal is dismissed.
This decision T 2340/12 (pdf) has European Case Law Identifier: ECLI:EP:BA:2018:T234012.20180315. The file wrapper can be found here. Photo "Wormhole" by Gently obtained via Pixabay under CC0 license (no changes made)

T 2101/12 - Non-technical disclosures are prior art

Delta Patents Patent Law -


In the appealed decision, D2 (a US patent application) was cited in a reasoning against novelty. One could therefore be led to believe that this document constitutes at least the most suitable starting point for the assessment of inventive step. The board is however of the opinion that such is not the case (r.6.1). The board also does not consider the document mentioned by the appellant, i.e. D3, or other documents cited in the search report, to be more suitable starting points. Instead, the board considers that the most suitable starting point is common general knowledge. The board considers it common general knowledge that documents, such as a will or a contract between parties, may be signed at a notary's office. In the present case, the board holds that the skilled person starts from this prior art method with zero technical features, the problem which consists in the automation of that method being solved entirely with technical means (r.7.15).
The appellant submitted that something can only be state of the art if it is related to a technological field or a field from which, because of its informational character, a skilled person would expect to derive technically relevant information, referring to T 172/03. The board agrees with the appellant that this opinion is not in line with Catchword 2 of T 172/03 (as also relied upon in the Guidelines for Examination G-VII, 2), unless one interprets the expression "technically relevant" in that Catchword in a trivial manner. The board however considers that the interpretation of Article 54(2) EPC given in T 172/03 is incorrect. 
The applicant also requested to refer to the Enlarged Board: In the assessment of the inventive step of subject matter presenting both technical and non-technical aspects, a problem-solution analysis using a publicly known entirely non-technical practice as "closest prior art", notwithstanding the existence of technical teachings in the same field? The Board did not consider this necessary (r.8)


Reasons for the Decision
Summary of Facts and Submissions

I. The appeal is against the decision by the examining division, dispatched with reasons on 12 April 2012, to refuse European patent application 08101403.7, on the basis that the subject-matter of independent claim 1 of the main and the two auxiliary requests was not new, Article 54 EPC, in the light of the following document:

D2 = US 2006/161 779 A1

II. A notice of appeal was received on 19 June 2012, the appeal fee being paid on the same day. A statement of grounds of appeal was received on 21 August 2012. The following document was additionally referred to in the appellant's reasoning:

D3 = WO 03/015370 A2

III. The present decision also makes reference to the following document, cited in the search report:

D1 = US 6 307 955 B1

IV. The appellant requested that the decision under appeal be set aside and a patent granted on the basis of the claims of a main or two auxiliary requests filed with the grounds of appeal. The appellant made a conditional request for oral proceedings.

V. The board issued a summons to oral proceedings. In an annex to the summons, the board set out its preliminary opinion on the appeal.

VI. On 22 December 2017, the appellant filed claims for three additional auxiliary requests, labelled respectively "Auxiliary request III" to "Auxiliary request V". During the oral proceedings, the appellant substituted those requests, in their numerical order, for those that were filed with the grounds of appeal, and filed claims for an additional auxiliary request, labelled "Auxiliary request VI".

VII. The appellant requests that the decision under appeal be set aside and a patent be granted on the basis of claims 1 to 11 of one of auxiliary requests III to V, all filed on 22 December 2017, or on the basis of claims 1 to 9 of auxiliary request VI filed during the oral proceedings.

The further text on file is:

description pages

1 to 7 as originally filed;

drawing sheets

1 and 2 as originally filed.

VIII. Independent claim 1 of the auxiliary request VI reads as follows:

"A method for providing a document (30) with an electronic signature in a system (1) comprising a trusted party server (2), and a computer device (3) comprising a display (5) and being arranged for communication with the trusted party server (2) via a network (4),

characterized in that the system (1) further comprises a signature device (6) for producing the electronic signature and being configured for communication with the trusted party server (2),

and in that the trusted party server (2):

- receives the document to be signed (32) from an author of the document (32); thereafter

- electronically authenticates (31) the document (30) received by providing it with a first authenticating sign (31), the authenticating sign (31) being a first PKI signature; thereafter

- displays the document to be signed (32) on the display (5) via the network (4) and the computer device (3); thereafter

- receives an electronic signature (9) produced by a signing party by means of the signature device (6); thereafter

- provides the document sent (33) with the received electronic signature (9) ; and thereafter

- provides the document (33) provided with the electronic signature (9) with a second authenticating sign (34) for linking the document sent and the electronic signature together, the second authentication sign (34) being a second PKI signature."

IX. Independent claim 1 of each of the higher ranking auxiliary requests III to V contains fewer features and has a broader scope than that of auxiliary request VI.

X. The appellant further requests that the following questions be referred to the Enlarged Board of Appeal under Article 112(1)(a) EPC:

"1. In the assessment of the inventive step of subject matter presenting both technical and non-technical aspects, is it compatible with the holding in T 172/03 and the "COMVIK" approach to conduct a problem-solution analysis using a publicly known entirely non-technical practice as "closest prior art", notwithstanding the existence of technical teachings in the same field?

2. If the first question is answered in the affirmative, does it make any difference whether there is a substantial body of prior technical teachings in the field, or only a small number of isolated publications?"

XI. At the end of the oral proceedings, the chairman announced the board's decision.

Reasons for the Decision

1. The admissibility of the appeal

The appeal is admissible.

2. Admissibility of the new requests

The board admits newly filed auxiliary requests III to VI, since they clearly address the board's observations made in the summons and during the oral proceedings.

3. Summary of the invention

The invention is in the field of electronic signatures for documents (description page 1, first paragraph). An "electronic signature" is understood to comprise a "written expression, signature, text or one or more biometric characteristics of a signer, which is suitable for authenticating documents" (description page 2, lines 27 to 30). Electronic signatures may be subject to legal requirements (description page 1, third paragraph). It is also said that, up to the priority date of the application, electronic signatures were used only on a small scale, due to a lack of necessary infrastructure and lack of trust of parties in such signatures (description paragraph bridging pages 1 and 2).

The aim of the invention is to deal with the above issues. For this purpose the invention foresees that the document is shown from a trusted third party server arranged outside the scope of authority of the provider of the document, inspiring confidence with the signer(s) that the document cannot be subsequently manipulated. The link between the file of the document and the electronic signature is also created outside the parties' scope of authority, so that manipulation is not possible in that case either (description page 2, third full paragraph).

4. Interpretation of expressions used in the claims

The board considers it necessary to indicate how it interprets some of the expressions used in the claims.

4.1 Providing a document with an (electronic) signature

The board interprets this expression as "connecting in some manner a distinctive mark of a person or other entity with a document". The purpose/significance/meaning of the distinctive mark or "signature" imposes no technical limitation on the claimed method/system. Indeed, it falls outside the scope of the claim and it is entirely up to the users of the system to agree how they will interpret the presence of a "signature" on said document.

As far as the method/system is concerned, it makes no difference whether the signature is used to indicate approval with the content of the document, or alternatively to indicate that the "signatory" certifies for instance that a document was produced by a certain author, was not modified after a certain moment, or possesses some other characteristic which is relevant to the users of the system.

In this respect, even if, as pointed out by the appellant (grounds of appeal, page 5, second and third paragraph), there may be a significant difference for the parties concerned between "signing" and "certifying" a document, such difference does not a priori translate into a technical difference.

4.2 Trusted party server

Also the term "trusted party" imposes no technical limitation on the server. It is entirely up to the users of the system to agree whether a given server may be considered a "trusted (third) party".

5. Novelty; Article 54 EPC

5.1 In the appealed decision (Reasons, sections 7, 9 and 11), the subject-matter of claim 1 of all requests was considered to lack novelty in view of D2.

According to the appealed decision (ibid., section 11), D2 discloses a method for providing a document with an electronic signature in a system comprising a trusted party server (TTP), and a computer device comprising a display and being arranged for communication with the TTP via a network, the system further comprising a signature device for producing the electronic signature and being configured for communication with the TTP, and in that the TTP:

(1) receives the document to be signed from an author of the document; thereafter

(2) displays the document to be signed on the display via the network and the computer device; thereafter

(3) receives an electronic signature produced by a signing party by means of the signature device; thereafter

(4) provides the document sent with the received electronic signature; and thereafter

(5) provides the document provided with the electronic signature with an authenticating sign for linking the document sent and the electronic signature together.

5.2 The board holds that, contrary to what is stated in the appealed decision, Reasons, section 12, D2 does not unambiguously disclose step (2) mentioned above, i.e. that the document is displayed before it is signed. Indeed, in the last sentence of said section 12, it is said that "signing something implies that the signer has seen it". Whilst the board agrees that this would be the usual situation, it points out that, for example when only the origin of a document needs to be certified, the certifier does not need to see the actual document but only needs to check its origin.

5.3 The board therefore holds that the subject-matter of claim 1 of all requests is novel; Article 54 EPC 1973.

6. Starting point for the assessment of inventive step

6.1 In the appealed decision, D2 was cited in a reasoning against novelty. One could therefore be led to believe that this document constitutes at least the most suitable starting point for the assessment of inventive step. The board is however of the opinion that such is not the case.

The board firstly points out that much of the disclosure of D2 is not straightforward, because of poor English language. The board understands that D2 discloses a system where information connected to a given document is stored in a database and, in encrypted form, in a 2D bar code (par. [0003]). The recipient of the printed document will scan the document with the bar code and decrypt the bar code. The information in the bar code, once decrypted, makes it possible to verify that the printed document is authentic (par. [0057] to [0065]).

The 2D barcode is generated by a member of a certification authority (par. [0004]). The system of D2 checks whether the member's signature is valid by comparing it with the member's stored signature (par. [0005]).

The board holds that D2 is not the most suitable starting point for the assessment of inventive step, for at least two reasons. Firstly, D2 does not unambiguously disclose that the document is displayed before it is signed (see above) Secondly, D2 does not unambiguously disclose that the document and the member's signature are somehow "linked together".

6.2 The board also does not consider the document mentioned by the appellant, i.e. D3, or other documents cited in the search report, to be more suitable starting points.

6.3 Instead, the board considers that the most suitable starting point is common general knowledge. The board considers it common general knowledge that documents, such as a will or a contract between parties, may be signed at a notary's office. The notary in such a case has the function of a "trusted third party". It is considered well known, and has not been denied by the appellant, that the whole process in the notary's office would typically comprise the following steps:

(a) A notary receives a document, which will need to be signed, from its author;

(b) the notary authenticates the document, e.g. by providing it with a seal;

(c) the notary presents ("displays") the document to a signatory (not necessarily, and indeed typically not, the same as the author), so that the signatory can gain knowledge of the document's content before signing it;

(d) the signatory signs the document;

(e) the notary authenticates the document together with the signature, i.e. the notary authenticates the fact that the given document was signed by the given signatory, linking the document and the signature together.

6.4 The appellant has submitted, both in the response to the summons (under I.A.1(a)) and during the oral proceedings, that something can only be state of the art if it is related to a technological field or a field from which, because of its informational character, a skilled person would expect to derive technically relevant information, referring to T 172/03.

6.5 According to the board, the wording of Article 54(2) EPC is clear and requires no interpretation:

"The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application" (emphasis added by the board).

Article 54(2) EPC itself contains no limitation according to which a non-technical process, such as the signing of a contract at the notary's office, may not be considered state of the art.

6.6 The board agrees with the appellant that this opinion is not in line with Catchword 2 of T 172/03 (as also relied upon in the Guidelines for Examination G-VII, 2), unless one interprets the expression "technically relevant" in that Catchword in a trivial manner. The board however considers that the interpretation of Article 54(2) EPC given in T 172/03 is incorrect.

In T 172/03, Reasons 9, it is said that a consistent construction of the patentability provisions "requires the term 'everything' in Article 54(2) EPC to be understood as concerning such kind of information which is relevant to some field of technology". According to the board, however, the legislator would have used a different term if such meaning had indeed been intended. A more appropriate expression would then for instance have been "all technical information". Instead, the wording of Article 54(2) EPC is unambiguous in that it contains an unqualified "everything", in all three languages ("alles" in German and "tout" in French).

No provision in the EPC requires said term to be interpreted differently. In particular, the appearance of the terms "Stand der Technik" and "état de la technique" in respectively the German and the French version of Article 54(2) does not require it. It is precisely Article 54(2) which defines what should be understood as "state of the art", and because it is a definition one cannot first ignore the definition, by saying that the term "state of the art" should be interpreted in some sense, and only then start to read the definition in the light of that interpretation. This is however exactly what is done in T 172/03 Reasons 9.

As to the statement in T 172/03 Reasons 9 that it "can hardly be assumed that the EPC envisaged the notional person skilled in the (technological) art to take notice of everything, in all fields of human culture and regardless of its informational character", the board observes that there is in this respect no difference with "technical" prior art, i.e. a skilled person will not take notice of any prior art, regardless of whether it is technical, if it does not contain information that is useful to him or her as a skilled person. On the other hand, if some generally known information is useful, even if it should be designated "non-technical", there is no reason why the skilled person would ignore it.

6.7 The board further notes that the statement made in Catchword 2 of T 172/03 is not part of established jurisprudence. Most notably, this limited view on prior art has not been mentioned in the summary of the pertinent case law given in T 154/04 DUNS (see point 5 of the reasons), which G 3/08 has referred to for its summary of the case law (see point 10.7.1 and 10.13.1 of the reasons).

6.8 The board is consequently of the opinion that the [editor: non-technical] process referred to under 6.3 above constitutes valid prior art under Article 54(2) EPC and may be used as the starting point in an inventive step analysis.

7. Inventive step; Article 56 EPC

7.1 The board holds that the subject-matter of claim 1 of auxiliary request VI is not inventive.

7.2 According to the appellant (Response to the summons, I.A,1(c)), the starting point chosen by the board for its inventive step analysis is a legal process and the skilled person would therefore try to end up with an improved legal process. From this reasoning it is apparent that the appellant considers the skilled person to be a legally skilled person. The board however considers that the human activity referred to under 6.3 above is well known and it sees no reason why a person skilled in the field of automation would not look at it from his or her own technical perspective.

7.3 The desire to automate human activities is a constant one. The board therefore deems it obvious that at some point the skilled person will want to automate said activity.

7.4 The board furthermore considers it obvious that a skilled person wishing to implement such automation will use commonly available tools for this purpose.

7.5 It will firstly be necessary to foresee a device that performs the function of the notary. In an automation context, this would typically be a computer (which may for instance be called "trusted (third) party server") that will be deemed trustworthy to the users of the system.

7.6 Another obvious automation measure, to be used instead of physical presence of the signatory at the notary's office, is the provision of a network that will connect a computer device used by the signatory to the trusted party server.

7.7 The skilled person further knows that the recording of a signature can be automated by means of dedicated "signature devices", such as disclosed e.g. in D1 (see abstract: "graphic tablet digitizer"). In order for the trusted party server to receive this signature, the signature device should be configured for communication with the trusted party server.

7.8 The technical equivalent of the human notary receiving the document from its author and authenticating it by providing it with a first authentication sign, will be that the trusted party server receives the document from its author and authenticates it electronically by providing it with a first authentication sign.

The board considers it obvious, in accordance with the established practice in the field of electronic authentication, to use a PKI (Public Key Infrastructure) signature for this purpose.

7.9 Just like a human notary shows to the signatory the document that needs to be signed, the "trusted party server" should display the document on a display that is part of the computer device used by the signatory, so that the latter can read it.

7.10 The signatory will then use the signature device to sign for instance as an indication of agreement with the contents of the document.

7.11 The "trusted party server", acting as notary, will receive the electronic signature, provide the document with this signature, and provide the document provided with the electronic signature with a second authentication sign for linking the document sent and the electronic signature together, the second authentication sign, in accordance with the general practice in the field of electronic authentication, being a second PKI signature.

7.12 The skilled person will therefore, as a result of a straightforward automation of a known process, arrive at the subject-matter of claim 1 of auxiliary request VI without demonstrating any inventive activity. The subject-matter of that claim is consequently not inventive; Article 56 EPC.

7.13 Claim 1 of auxiliary requests III to V is broader than that of auxiliary request VI. The above argument concerning lack of inventive step therefore also applies to claim 1 of the other requests, the subject-matter of which is consequently also not inventive; Article 56 EPC.

7.14 The appellant stressed during the oral proceedings that the presence of a notary is essential during the process and that a skilled person would therefore consider the use of a videoconference facility. The board observes firstly that the crucial notary tasks, i.e. identification of the signatory (which may be done by verifying its electronic signature) and witnessing the signing process are already carried out by the trusted party server. Secondly, the board points out that the wording of claim 1 does not exclude that the signing session be held in the context of a videoconference, with physical presence of the parties and a notary.

7.15 The appellant has objected (response to the summons, I.A.1(d)) that the approach used in "COMVIK" (T 641/00) should be applied to assess the inventive step of a claim containing a mix of technical and non-technical features. In the present case, however, the board holds that the skilled person starts from a prior art method with zero technical features, the problem which consists in the automation of that method being solved entirely with technical means. The question whether the board's approach deviates from that used in T 641/00 therefore does not arise.

7.16 According to the appellant (response to the summons, V.), the European Patent Office has the burden of proving the content of the common general knowledge it relies on, and for the present appeal the consequence should be that the case be remitted to the first instance in order to discuss inventive step in the light of such further evidence.

The board however observes that the appellant has at no moment disputed that the process mentioned under 6.3 above is indeed common general knowledge. The board further considers that the process as described above contains sufficient detail to allow the skilled person to arrive at the claimed subject-matter using otherwise nothing more than conventional automation techniques.

The board therefore considers that no documentary evidence is required to prove the extent of the cited common general knowledge, let alone that it would be required to remit the case for a continuation of the inventive step discussion at the first instance in the light of such further evidence.

8. Possible referral to the Enlarged Board of Appeal under Article 112(1)(a) EPC

8.1 As is apparent from the above reasoning, the board has not identified any questions that would need to be answered by the Enlarged Board of Appeal, in order for the present board to be able to reach its decision.

In particular, the board answers the appellant's first question (see point X. above) in the negative. However, having given reasons for its deviation from Catchword 2 of T 172/03 (Article 20(1) RPBA, see point 6.6 above), the board need not refer the question to the Enlarged Board of Appeal. The appellant's second question depends on an affirmative answer to the first question and thus does not arise.

8.2 The appellant's request to refer said questions to the Enlarged Board of Appeal under Article 112(1)(a) EPC should therefore be refused.

Order

For these reasons it is decided that:

1. The request for referral of questions to the Enlarged Board of Appeal is refused.

2. The appeal is dismissed.

Notes[by the author]

T 172/03's catchwords (refer also to its reasons 8-10):
cw.1. The term "state of the art" in Article 54 EPC should, in compliance with the French and German text, be understood as "state of technology", which in the context of the EPC does not include the state of the art in commerce and business methods. The term "everything" in Article 54(2) EPC is to be understood as concerning such kind of information which is relevant to some field of technology.
cw.2. From these considerations it follows that anything which is not related to any technological field or field from which, because of its informational character, a skilled person would expect to derive any technically relevant information, does not belong to the state of the art to be considered in the context of Articles 54 and 56, even if it had been made available to the general public before the relevant priority date (see points 8 to 10 of the reasons).
r.8 cites: "[...] However, as explained in the COMVIK decision, point 2, the term "state of the art" in Article 54 EPC should, in compliance with the French and German text, be understood as "state of technology", which in the context of the EPC does not include the state of the art in commerce and business methods.""

T 641/00 (COMVIK) (DE, EN) headnote 1 &2 and reason 2:
hn 1. An invention consisting of a mixture of technical and non-technical features and having technical character as a whole is to be assessed with respect to the requirement of inventive step by taking account of all those features which contribute to said technical character whereas features making no such contribution cannot support the presence of inventive step.
hn 2. Although the technical problem to be solved should not be formulated to contain pointers to the solution or partially anticipate it, merely because some feature appears in the claim does not automatically exclude it from appearing in the formulation of the problem. In particular where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met.
And reason 2:

r.2. Article 56 EPC states in its English text that an invention shall be considered to involve an inventive step, if having regard to the state of the art, it is not obvious to a person skilled in the art. The equally authentic French and German texts are somewhat more informative in that they can best be rendered in English as stating that an invention shall be considered as based on inventive activity if a skilled person cannot derive it in an obvious manner from the state of technology.


This decision T 2101/12 (pdf) has European Case Law Identifier: ECLI:EP:BA:2018:T210112.20180124. The file wrapper can be found here. Photo "Secret Parchment" by Filter Forge obtained via Flickr under CC BY 2.0 license (no changes made)

J 10/15 - No jurisdiction for Board of Appeal for decisions of receving section during International phase

Delta Patents Patent Law -

Where are those missing figures?
The applicant in this case filed a PCT application through the EPO by having a messenger handing in the application at an EPO office in Munich. About two weeks later, the applicant receives a communication that the figures are missing. 
The applicant does not agree, and wants the receiving section to decide that the figures were present. Subsidiary, a request for incorporation by reference under rule 20.6 jo 4.18 PCT is made. The later request is granted, but the former is not. The applicant appeals the case at the EPO.
Unfortunately for the applicant, the Board of Appeal EPO decides that they are not competent to decide the case. The following head note is provided:
Während der internationalen Phase einer PCT Anmeldung ist eine Beschwerdekammer unzuständig, um eine Entscheidung des EPA als Anmeldeamt zu überprüfen.
which translates to:
During the international phase of a PCT application, a Board of Appeal has no jurisdiction to review a decision of the EPO as receiving Office.



Entscheidungsgründe
Zuständigkeit der Beschwerdekammer
1. Nach Artikel 21 (1) EPÜ sind die Beschwerdekammern für die Prüfung von Beschwerden gegen Entscheidungen der Eingangsstelle, der Prüfungsabteilungen, der Einspruchsabteilungen und der Rechstabteilung zuständig.
Durch diese Bestimmung wird die Zuständigkeit der Beschwerdekammern erschöpfend auf die Prüfung von Beschwerden gegen die Entscheidungen der oben genannten Organe für die Durchführung der im Europäischen Patentübereinkommen vorgesehenen Verfahren beschränkt.
Grundsätzlich kann sich ein Gericht, bzw. ein Richter, nicht nach Bedarf neue Zuständigkeiten schaffen, nur der Gesetzgeber kann in einem solchen Zusammenhang tätig werden (vgl. G1/97, Nr. 3 b) der Entscheidungsgründe, ABl 2000, 322).
2. Aus dem dargestellten Sachverhalt sowie aus der vorhandenen Akte geht hervor, dass die angefochtene Entscheidung während der internationalen Phase der Patentanmeldung gefällt wurde, d.h. die Entscheidung wurde vom EPA, nicht als solches, sondern als internationale Behörde nach dem Vertrag über die internationale Zusammenarbeit auf dem Gebiet des Patentwesens (PCT) getroffen.
Mit Ausnahme des darin geregelten Widerspruchsverfahrens sieht der PCT, als internationales Übereinkommen, keine weiteren Rechtsmittelverfahren vor.
Auch nach ständiger Rechtsprechung sind die Beschwerdekammern grundsätzlich nicht zuständig, um die vom EPA als internationale Behörde getroffenen Entscheidungen zu überprüfen (J 14/98, Nr. 2.1 der Entscheidungsgründe; J 20/89, Nr. 2 der Entscheidungsgründe, ABl. 1991, 375; J 15/91, Nr. 2 der Entscheidungsgründe).
3. Artikel 150 (2) EPÜ bestimmt:
"Internationale Anmeldungen nach dem PCT können Gegenstand von Verfahren vor dem Europäischen Patentamt sein. In diesen Verfahren sind der PCT, seine Ausführungsordnung und ergänzend dieses Übereinkommen anzuwenden. Bei mangelnder Übereinstimmung gehen die Vorschriften des PCT oder seiner Ausführungsordnung vor."
Daraus ergibt sich grundsätzlich nur, dass das EPA im Rahmen des PCT für internationale Anmeldungen tätig wird. Aus dieser Bestimmung lässt sich jedoch nicht ableiten, dass ergänzend zum PCT ein im EPÜ vorgesehenes Rechtsmittel schon in der internationalen Phase der Anmeldung anzuwenden ist, wenn es vom Gesetzgeber im PCT nicht vorgesehen wurde (s. J 15/91, Nr.3 der Entscheidungsgründe, S.9, Abs.2).
4. Die Kammer kann der Argumentation der Beschwerdeführerin nicht folgen, wonach der Artikel 125 EPÜ in analoger Weise anzuwenden sei und aus den in den Vertragsstaaten geltenden Verfahrensgrundsätzen abzuleiten sei, dass das im EPÜ vorgesehene Rechtsmittel der Beschwerde Anwendung findet, wenn das EPA als Anmeldeamt im Sinne des PCT tätig wurde. Die Beschwerdeführerin bezog sich diesbezüglich insbesondere auf das deutsche Recht und den Grundsatz, dass jede Entscheidung eines hoheitlichen Organs gerichtlich überprüfbar sein müsse.
Aus der Entscheidung G 1/97 der Großen Beschwerdekammer ergibt sich, dass sich der Artikel 125 EPÜ "nicht auf das Fehlen von Verfahren, sondern sich nur auf das Fehlen von Vorschriften über das Verfahren bezieht" (G 1/97, Nr. 3 a) der Entscheidungsgründe, ABl. 2000, 322).
Es ist jedoch eindeutig, dass die Vertragstaaten des PCT, die Möglichkeit der Einlegung einer Beschwerde in der internationalen Phase nicht vorgesehen haben, bzw. ein solches Rechtsmittel aus verfahrensökonomischen Gründen für nicht dienlich erachteten (s. dazu J 20/89, Nr. 3 der Entscheidungsgründe; J 15/91, Nr. 2 der Entscheidungsgründe, S. 7, Abs.2).
Eine ergänzende bzw. analoge Anwendung des Artikel 125 EPÜ, wie von der Beschwerdeführerin gefordert, bietet somit keine rechtliche Grundlage für die Schaffung eines besonderen Rechtsmittels gegen Entscheidungen, die vom EPA als Anmeldeamt nach dem PCT getroffen wurden (vgl. zur Frage der analogen Anwendung des Artikels 125 EPÜ: G 1/97, Punkt 3 b) der Entscheidungsgründe).
5. Aus diesen Gründen ist die Kammer zum Ergebnis gekommen, dass ihre Zuständigkeit im vorliegenden Fall nicht gegeben ist.
(...)
Entscheidungsformel
Aus diesen Gründen wird entschieden:
1. Die Beschwerdekammer ist zur Beurteilung der vorliegenden Beschwerde nicht zuständig.
2. Der Antrag auf Vorlage einer Rechtsfrage an die Große Beschwerdekammer wird zurückgewiesen.
This decision J 0010/15  (pdf) has European Case Law Identifier: ECLI:EP:BA:2018:J001015.20180130. The file wrapper can be found here. Photo by Monsterkoi obtained via Pixabay under CC0 license.

T 1423/13 - OP at the instance of the EPO

Delta Patents Patent Law -


A (belated) Easter picture, with no relation to this case...

In this examination appeal, the Examining Division (ED) warned the Applicant now Appellant that "in case no allowable set of claims is presented, the next office action will be the summons to oral proceedings in the Hague". However, the application was subsequently refused without holding oral proceedings, with the decision noting that "the applicant did not request the oral proceedings at any point of the written procedure" and it is therefore "concluded that the applicant's right to be heard has been entirely respected (Article 113(1) EPC".

In appeal, the Board however concludes that the applicant had a legitimate expectation that oral proceedings were to be scheduled, and that the course of action of the ED amounted to a substantial procedural violation. As a reminder, Art. 116(1) expressly allows oral proceedings to be arranged "at the instance of the EPO" and thereby "without a request from a party", see GL E III-4.

Summary of Facts and Submissions

I. The appeal lies from the decision of the Examining Division refusing divisional European patent application No. 10192821.6 on the ground of lack of inventive step.

II. In its last communication (dated 11 May 2012) issued before the refusal decision had been posted, the Examining Division had maintained inventive step objections already raised earlier against the then pending Claim 1. It also stated the following:

"Finally, the applicant is warned that in case no allowable set of claims is presented, the next office action will be the summons to oral proceedings in the Hague" (emphasis added by the Board).

III. With its reply thereto (dated 20 November 2012), the Applicant had filed another set of claims (Claim 1 remaining unamended) and taken position with regard to (inter alia) inventive step as regards the subject-matter of Claim 1. The representative also indicated its readiness to deal with remaining objections by telephone, if considered expedient.

IV. The Examining Division then issued the decision to refuse the application without contacting the Applicant again. The decision , although dated "1 February 2013", had actually already been handed over to the EPO postal service on "29.01.13", as apparent from EPO Form 2007, Sheet 2, which is part of the decision.

In the decision under appeal, the Examining Division came (inter alia) to the following conclusions.

a) "The decision takes into account the latest submissions and is based on facts, evidence and grounds already presented in the written procedure. The latest submissions (by the Applicant, i.e. letter dated 20 November 2012) did not overcome the objections under Article 56 EPC raised in the European Search Opinion (issued on 9 May 2009) and repeated in the communication (of the Examining Division) dated 11 May 2012."

b) "As the last amendments do not change the scope of the claimed subject-matter (when compared to the previous examined set of claims), the objections underlying the present decision were already known to the applicant. Considering also the course of the proceedings for the parent application EP 02 799 294 (and in particular the detailed discussion of its content during the oral proceedings held on 23 November 2010), in view of the Examining Division there is no further point in pursuing the subject-matter of the present divisional. Given the content of both applications and the nature of the outstanding objections, no new arguments can be conceivably brought forward by the applicant that could lead to the patentable subject-matter."

c) "The request to contact the applicant on the phone in case any outstanding objections remain 'which may be usefully dealt with by telephone' is not granted as the telephone consultation cannot bring the present proceedings forward".

d) "As the applicant did not request the oral proceedings at any point of the written procedure, it is concluded that the applicant's right to be heard has been entirely respected (Article 113(1) EPC)".

V. By a letter filed online on 31 January 2013, the Applicant had requested oral proceedings in the event that the Examining Division was minded to refuse the application.

VI. The Applicant did not return the "acknowledgement of receipt" form dispatched together with the decision of the Examining Division but filed a notice of appeal against said decision within the prescribed time limit.

VII. With its statement of grounds of appeal filed on 6 June 2013, the Appellant/Applicant filed further items of evidence and five sets of claims as Main Request (claims that had been pending before the Examining Division) and 1**(st) to 4**(th) Auxiliary Requests.

VIII. The Applicant requested that the decision under appeal be set aside and that a patent be granted on the basis of the claims according to the Main Request or, alternatively, that the case be remitted to the Examining Division for further consideration of the Main Request, or of any of the Auxiliary Requests, filed with the statement setting out the grounds of appeal.

IX. The arguments of the Appellant of relevance here can be summarised as follows (see statement of grounds, Point 44):

a) The Applicant had filed a request for oral proceedings with its letter of 31 January 2013, i.e. before the decision was issued.

b) The Examining Division unequivocally stated in its Communication of 11 May 2012 that oral proceedings would be the next step if no allowable claims were presented. Hence, the Applicant had a reasonable and legitimate expectation that oral proceedings would have been called, irrespective of whether or not the Applicant had actually requested them.

c) Therefore, the issuance of the decision instead of calling oral proceedings was against the principle of legitimate expectations.

d) This course of action amounted to a substantial procedural violation warranting the remittal of the case to the Examining Division and the reimbursement of the appeal fee pursuant to

Rule 103(1)(a) EPC.

Reasons for the Decision

1. The present decision only concerns the question whether the refusal of the application was the consequence of a substantial procedural violation warranting the remittal of the case and the reimbursement of the appeal fee.

2. Procedural violation

2.1 According to Article 116(1) EPC, "Oral proceedings shall take place either at the instance of the European Patent Office if it considers this to be expedient or at the request of any party to the proceedings" (emphasis added by the Board).

2.2 For the Board, the wording of the statement of the Examining Division in its communication dated 11 May 2012 that "... in case no allowable set of claims is presented, the next office action will be the summons to oral proceedings ..." (emphasis added by the Board) is perfectly clear per se. It unambiguously implies that the Examining Division considered an oral hearing "at the instance of the EPO" to be expedient under the conditions expressly identified, i.e. "in case no allowable set of claims is presented".

2.3 Between the issuance of said communication and of the decision to refuse the application, the Examining Division neither withdrew nor rectified said statement, e.g. in order to inform or warn the Applicant that its application might be refused even without holding oral proceedings, as previously deemed expedient if no allowable claims were filed.

2.4 The considerations of the Examining Division (decision under appeal, paragraph bridging pages 2 and 3) based on what happened in the prosecution of the parent application are of no relevance, in particular since such considerations had already been verbalised in the very same communication dated 11 May 2012 (see section under the heading "Article 56 EPC") which contains the final indication "... in case no allowable set of claims is presented, the next office action will be the summons to oral proceedings ...".

2.5 For the Board, this statement by the Examining Division was a source of legitimate expectation for the Applicant. In the present case, the violation of this principle led to the decision to refuse the application, which came as a surprise to the Applicant.

More particularly, in the communication of 11 May 2012, the Examining Division had given the clear impression that if no allowable claims were filed, no decision negatively affecting the Applicant would be taking without beforehand summoning the Applicant to oral proceedings.

2.6 Having given that impression, the Examining Division, by issuing the decision to refuse the application without summoning the Applicant to oral proceedings, took the Applicant by surprise, thereby depriving it of a further opportunity to present arguments or its final fall back positions.

The applicant was thus denied its right to be heard (see also, for instance, decisions T 611/01 of 23 August 2004, Reasons, 5.2 to 6, and T 849/03 of 19 August 2004, Reasons).

2.7 In the Board's judgement, this course of action amounts to a substantial procedural violation.

3. Consequences

3.1 Request for remittal

3.1.1 Article 11 RPBA stipulates that "a Board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reason present themselves for doing otherwise".

3.1.2 Considering the circumstances of the present case, the Board sees no such "special reasons" possibly justifying not to remit the case. Moreover, remittal was expressly requested by the Appellant.

3.2 Reimbursement of the appeal fee

Considering that the Board deems the appeal to be allowable, the reimbursement of the appeal fee pursuant to Rule 103(1)(a) EPC is equitable by reason of the substantial procedural violation occurred.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the Examining Division for further prosecution.

3. The appeal fee is to be reimbursed.


This decision T 1423/13 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:T142313.20171221. The file wrapper can be found hereann. Photo obtained via Pixabay under CC0 license.

T 0198/16 - Yea or Nay to Intention to Pay?

Delta Patents Patent Law -




Is the mere intention of an appellant to pay the appeal fee, as expressed by reference to EPO Form 1010 ("Payment of fees and expenses") in the Notice of Appeal, enough to authorise the EPO to debit appellant's deposit account (holding sufficient funds), when said  Form 2010 has erroneously not been sent together with the Notice?

In this examination appeal, the Board held - deviating from T 1265/10 - that regardless of whether or not the EPO would have access to sufficient the funds of the party intending to pay, such an intention can never be considered equivalent to an order.

Referring to R 18/13, the Board further found that - different from a mistake made by an assistant - the mistake made by the representative to not explicitly instruct his assistant to pay the appeal fee and to not properly review the electronic receipt is a mistake that cannot be excusedAccordingly, the request for re-establishment of rights was refused.

As a result, the appeal was deemed not to have been filed.

Catchword:
1. The intention to authorise debiting of the deposit account does NOT already allow the EPO to act on such authorisation and carry out such intent where the EPO, under the deposit account system, already holds such money in trust (deviation in particular from T 1265/10, at point 15), (see point 3.4.3 of the quotation from the summons under point 1 of the Reasons).
2. A representative must give express and clear instructions to an assistant to the effect that the appeal fee has to be paid. It is not enough to rely on the assistant's deducing the duty to file the payment form from the notice of appeal, which includes the sentence: "The appeal fee is paid via the enclosed EPO form 1010."

Summary of Facts and Submissions

I. The appeal is against the decision of the examining division of 19 October 2015 refusing European patent application No. 07004013.4 (publication number EP 1 887 800 A2). The present decision is in relation to a communication of 19 April 2016 from the registrar of the board noting a loss of rights pursuant to Rule 112(1) EPC for failure to pay the appeal fee. The appellant requested that the board issue a communication under Rule 112(2) EPC stating that the appeal fee had been paid in time (main request), or that a certain question be referred to the Enlarged Board of Appeal (first auxiliary request), or that the appellant have its right to pay the appeal fee within the prescribed time limit re-established under Article 122(1) EPC (second auxiliary request).
II. A notice of appeal dated 24 December 2015 was filed on that date via EPO Online Filing, using Form 1038E, together with a statement of the grounds of appeal dated 22 December 2015. The one-page notice of appeal included inter alia the following text portions (emphasis in the original):

We hereby lodge an appeal under Article 108 EPC against the decision of the Opposition Division / Examining Division, dated 19.10.2015, refusing European patent application No. 1887800, Multimedia playback control apparatus ...The appeal is lodged against the decision in its entirety.The appeal fee is paid via the enclosed EPO form 1010.

However, contrary to what the letter said, EPO Form 1010 was not transmitted together with the notice of appeal (and the statement of grounds).

III. With a communication of 19 April 2016 sent to the applicant on Form 3019 the registrar of the board noted a loss of rights pursuant to Rule 112(1) EPC. In the communication it was said that the appeal fee had not been paid. Pursuant to Article 108, second sentence, EPC, the appeal was accordingly deemed not to have been filed.

IV. On 2 May 2016 the appellant requested a decision pursuant to Rule 112(2) EPC. It argued that, under the pertinent case law of the boards of appeal and the Arrangements for deposit accounts, as amended with effect from 1 April 2014 (hereinafter referred to as ADA 2014), the appeal fee had been paid on 24 December 2015, since the EPO had clearly been authorised to debit it from an identifiable deposit account. With Form 1010 filled in and attached to the letter of 2 May 2016, the formality required by ADA 2014 had also been completed. As a consequence, the finding of non-payment of the appeal fee was incorrect. Therefore, it was requested that a decision be taken that the payment of the fee for appeal had been validly made within the time limit of filing an appeal pursuant to Article 108 EPC and that the appeal could go forward.

V. In a letter of 21 June 2016, the applicant requested re-establishment of rights and paid the corresponding fee on the same day. It also filed supporting documents for the request. The request was made as a precaution should the board, for whatever reason, consider that the appeal fee was deemed not to have been paid. The applicant argued that re-establishment of rights should be granted since the time limit for payment of the appeal fee had been missed "as a result of an isolated human error by a reliable, experienced employee [i.e. formalities officer] working within a normally satisfactory system" (see fifth bullet point on page 5).
More specifically, the formalities officer had filed both the notice of appeal (dated 24 December 2015) and the statement of grounds of appeal (dated 22 December 2015) on 24 December 2015. The representative had finalised those documents on 22 December 2015 before leaving on vacation. Since only one formalities officer was present in the Eindhoven office of the association of representatives on Christmas Eve, it had been agreed verbally between that officer and the representative that the latter would check the filed documents during the interval between Christmas and New Year. In case of an error, there would still be time to correct it, since the deadline was 4 January 2016. (See page 5, second bullet point.)
On 28 December 2015 the representative reviewed the "acknowledgement of receipt" document as received from the EPO. "From the information on this document the [representative] ... concludes that all documents, including the form 1010, were filed ..." (see page 5, fourth bullet point).
On 28 December 2015, the representative also checked the generated invoice. That invoice included an item relating to the fee for filing the appeal. The representative at that point did not realise that the fact that the fee had been correctly invoiced to the client did not conclusively prove that the fee had also been paid to the EPO.
Not until the receipt of the notice of loss of rights on 21 April 2016 did the representative become aware of the non-payment of the appeal fee (see page 6, second bullet point).

VI. On 23 June 2016 the applicant requested oral proceedings as a precaution in case the board "contemplates a decision that not meets the applicant's request...".

VII. In a communication of 11 September 2017 annexed to the summons to oral proceedings scheduled for 19 December 2017 (hereinafter referred to as "the annex"), the board expressed its provisional opinion that payment had not been made upon receipt on 24 December 2015 of the notice of appeal which mentioned that the appeal fee had been paid via enclosed Form 1010. It did not follow the pertinent case law under which payment on that date would have been accepted. Nor had payment been received subsequently before lapse of the time limit on 4 January 2016. As a consequence, the board would likely confirm the finding of loss of rights noted in the registrar's communication of 19 April 2016 in a decision. The appeal would accordingly be deemed not to have been filed. This was subject to the merits of the request for re-establishment of rights.
As to that request, the board provisionally considered that the cause of non-compliance with the period for paying the appeal fee, taking into account that due care was a permanent obligation, had been removed upon expiry of the appeal period (on 4 January 2016) and not the much later date of receipt of the loss-of-rights communication (dated 19 April 2016). The representative had not exercised due care because, when reviewing the EPO's acknowledgement of receipt on 28 December 2015, he ought to have noticed that payment Form 1010 had not been mentioned. Consequently, the request for re-establishment was deemed not to have been filed. In the alternative, the request was unfounded on its merits for lack of exercise of due care for not properly reviewing the receipt and also for failure to instruct the assistant to make payment in an admissible way within the framework of the filing of the notice of appeal.

VIII. In a submission in reply of 17 November 2017, the representative maintained that the appeal fee had been validly paid because the notice of appeal contained a clear order for such payment. Should the board continue not to follow the pertinent case law, then a specific question should be referred to the Enlarged Board of Appeal. As to re-establishment of rights, the date when the cause of non-compliance with the period for paying the appeal fee had been removed was the receipt of the loss-of-rights communication, and not the date when the appeal period expired.

IX. The board held oral proceedings on 19 December 2017.
The appellant requested that the board issue a communication under Rule 112(2) EPC stating that the appeal fee had been paid in time (main request), or
that a question be referred to the Enlarged Board of Appeal, namely:

Is an intention to authorize a debit account sufficient to allow the Office to act on an authorization and carry out such intent, in a situation where the debit account, the fee that is due and the account holder are clearly identifiable, and where the debit account holds sufficient funds? (first auxiliary request),
or that the appellant have its right to pay the appeal fee within the prescribed time limit re-established under Article 122(1) EPC (second auxiliary request).

At the end of the oral proceedings, the chairman announced that a decision would be issued in writing.


Reasons for the Decision

1. Main request for a communication confirming timely payment of the appeal fee
As to this point, the appellant's submissions made in the reply to the annex and during the oral proceedings did not make the board deviate from its preliminary opinion as comprehensively expressed in the annex, section C. Legal assessment, point 3, up to the side note in point 3.4.3 starting with the clause "As an aside ...", with the exception of two paragraphs of the quoted section of point 3.4.1 that are struck through. The corresponding text is set forth verbatim below. (As for the two struck-through paragraphs, see the explanation following the quotation.)

[beginning of quotation]

"3. Whether the appeal is deemed not to have been filed for failure to pay the appeal fee within the time limit for filing an appeal

3.1 The issue

The notice of appeal against the decision of the examining division of 19 October 2015 was received on 24 December 2015 and, therefore, within the two-month appeal period set out in Article 108, first sentence, EPC, which expired on 4 January 2016 (see Rules 126(2) and 134(1) EPC). Pursuant to Article 108, second sentence, EPC, however, 'Notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid'.
The question is whether, in the circumstances of the present case, the sentence 'The appeal fee is paid via the enclosed EPO form 1010' (the form had not been enclosed) in the notice of appeal must be considered to constitute a valid order for payment of the appeal fee by debit from a deposit account with the EPO. If so, the appeal fee would have been paid on 24 December 2015, and the appeal would be deemed to have been filed on that day (subject to the account containing sufficient funds). Otherwise, in the absence of any payment received within the time limit that expired on 4 January 2016, the appeal would be deemed not to have been filed, as indicated in the Registry's communication of 19 April 2016.

3.2 The legal provisions governing deposit accounts for paying fees

Under Article 5(1) of the Rules relating to Fees ('RFees'), the fees due to the Office shall be paid by payment or transfer to a bank account held by the Office. The President of the EPO may allow other methods, as follows from Articles 5(2) and 7(2) RFees. Under these provisions, the EPO made available deposit accounts for paying fees, expenses and prices to be levied by the Office.
- The ADA 2015
Pursuant to the Decision of the President of 12 February 2015 the currently valid Arrangements for deposit accounts (ADA 2015) (see supplementary publication - OJ EPO 3/2015) entered into force on 1 April 2015. They supersede the ADA 2014 dated 1 April 2014 - and relied on by the applicant (supplementary publication - OJ EPO 4/2014). The following provisions pertinent to the present case have been extracted from the ADA 2015 (emphases added if not indicated otherwise; footnotes omitted):

6.2 Debiting occurs only on the basis of a debit order signed by the account holder.

This may be
- a debit order for individual fees, or
- an automatic debit order filed under the automatic debiting procedure for a specific European or international patent application and authorising the debiting of fees automatically as the proceedings progress,
and may be filed
- via EPO Online Filing or the EPO's Case Management System (new online filing, CMS), using EPO Forms 1001E and 1200E
- on paper, by fax or via web-form filing, using EPO Forms 1001 and 1200
- via EPO Online Filing, PCT-SAFE, CMS or ePCT, using the PCT Fee Calculation Sheet annexed to Form PCT/RO/101 (PCT Request) or Form PCT/IPEA/401
- via Online Fee Payment in Online services, in which case authorisation by smart card takes the place of a signature
- via EPO Online Filing and CMS, using Form 1038E
- on paper, by fax or via web-form filing, using EPO Form 1010, Form PCT/RO/101 (PCT Request) or Form PCT/IPEA/401 for each individual application concerned.
For debit orders filed on paper, use of the PCT/EPO standard forms is mandatory [emphasis in the original].
6.3 The debit order must be clear, unambiguous and unconditional. It must contain the particulars necessary to identify the purpose of the payment, including the amount of each fee or expense concerned, and must indicate the number of the account which is to be debited. Provided there are sufficient funds in the deposit account on the date of receipt of the debit order by the EPO, that date will be considered as the date on which the payment is made.

What is important for the present case is that, under the ADA 2015, for (non-automatic) debiting of the deposit account a signed debit order is required. It may, among other options, be filed
- via EPO Online Filing, using Form 1038E (letter accompanying subsequently filed items) or
- on paper, by fax or via web-form filing, using EPO Form 1010
For debit orders filed on paper, use of the PCT/EPO standard forms is mandatory.
- The ADA 2014
It is the ADA 2014 on which the applicant relies.

The Notice from the EPO dated 11 February 2014 concerning revision of the ADA and their annexes summarises the main changes to the ADA in the version that entered into force on 1 April 2014 (and was superseded by the version valid since 1 April 2015, i.e. the ADA 2015).

Under point 6.2 of the ADA 2014 the debit order might be filed, inter alia,
- by means of Online Fee Payment via Online services, in which case authorisation by smart card takes the place of a signature,
- by means of EPO Online Filing using EPO Form 1038E (letter accompanying subsequently filed items),
- on paper, in which case the use of EPO Form 1010 or PCT Form PCT/RO/101 or IPEA/401 is mandatory,
- by fax, in which case the use of EPO Form 1010 or PCT Form PCT/RO/101 or IPEA/401 is mandatory, and the forms should be sent to the EPO's central fax number in Munich ...,

6.3 The debit order must be clear, unambiguous and unconditional. It must contain the particulars necessary to identify the purpose of the payment, including the amount of each fee or expense concerned, and must indicate the number of the account which is to be debited. Paper debit orders must be filed using the PCT/EPO standard forms (see point 6.2 above). Provided there are sufficient funds in the deposit account on the date of receipt of the debit order by the EPO, that date will be considered as the date on which the payment is made.
[Emphases added, footnote omitted.]

The Notice of 11 February 2014 sets forth (under point I, sub-heading 'Debiting the account'), inter alia, that
the use of EPO Form 1010 ... for filing debit orders will become mandatory on 1 April 2014. …
Failure to use the above forms will delay processing considerably, although payers will keep the original submission date as payment date. In such cases, however, for processing purposes, from 1 April 2014 onwards debit orders are to be resubmitted using the standard forms. [Emphases added.]
3.3 The case law of the boards of appeal relating to payment by debit from a deposit account
The following overview is based on the publication 'Case Law of the EPO Boards of Appeal', 8th edition, 2016, point III.Q.2.2, pp. 793-794.
According to T 17/83 (OJ 1984, 306) a timely filed statementthat a debit order for payment of a fee had been issued was itself considered such a debit order in the absence of any record of the original.
In T 1265/10 Section X of the notice of opposition (EPO Form 2300) was crossed to indicate enclosure of a fee payment voucher (EPO Form 1010), which enclosure, however, was not found at the EPO. The board held that this was a declaration of the intention to pay the opposition fee.
A debit order had to be unambiguously recognisable and show a clear and unambiguous intention to make a particular payment (T 170/83, OJ 1984, 605; T 152/82, OJ 1984, 301; T 152/85, OJ 1987, 191).
As stated in T 170/83, an authorisation to be derived from the circumstances required that the authorising person (account holder) was known and clearly identifiable, and that certain fees due to the EPO for a known procedure were meant to be paid by the withdrawal from such account (and not in any other way). Following T 806/99, which was based on almost identical facts, the board found these conditions to be fulfilled here. This was sufficient for payment of the fee. The board deciding case T 806/99 (at point 4)
considered the fact that the representative regularly paid via the debit account, that other forms of payment such as payment per cheque could be excluded due to the fact that point IX of the opposition form did not list that a cheque had been enclosed, that by the rather detailed opposition statement it could be excluded that the opposition was not meant seriously, and that thereby it could be clearly established that the representative had intended to pay the opposition fee by the EPO debiting his account for the correct amount. [Emphasis added.]

3.4 Applying the legal provisions relating to payment by debit from a deposit account

3.4.1 Valid order for payment (points 6.2 and 6.3, first sentence, ADA 2015) in the light of the case law

It was said in the notice of appeal that 'The appeal fee is paid via the enclosed EPO form 1010'. EPO Form 1010 was not enclosed. Given that the notice of appeal was filed via EPO Online Filing, using Form 1038E (letter accompanying subsequently filed items), that form would have had to be used as well for filing the debit order for the appeal fee, and not Form 1010.
It is noted in this respect that, different from the two previous Forms 1038E used for filing the notice of appeal (together with the statement of grounds) and for requesting a decision under Rule 112(2) EPC, Form 1038E used for the request for re-establishment of rights did include the filled-out boxes 'Fees' and 'Payment' authorising the EPO to debit from the deposit account any fees and costs indicated on the fees 'page', (see point 4 above), in other words apparently did comply with the pertinent provisions.
The fact that Form 1010 which was mentioned in the notice of appeal was not the right form to be used for filing the debit order might be considered having an impact on whether or not the applicant could benefit from the application of the long-standing case law of the boards of appeal, as summarised in previous section 3.3 above. The case at least differs from T 1265/10 and T 806/99 in that in those cases the section of the notice of opposition crossed indicated enclosure of the appropriate fee payment voucher, i.e. Form 1010. Different therefrom, in the present case, Form 1010 indicated was not the right document
Favourably for the applicant, however, the board will consider an erroneous use of Form 1010 as a formality that would have had the mere consequence that the respective fee would have been debited manually and the payer would have kept the original submission date as payment date. This seems to be the practice of the EPO.
Under this assumption and under the conditions of the case law mentioned above, set out thoroughly in T 1265/10, it would then be possible to find that an order for payment of the appeal fee was validly given in the notice of appeal (subject to that notice having been validly signed; see above, at point C2):
- The authorising person (account holder) is known and clearly identifiable: it is the applicant filing an appeal.
- The appeal fee was meant to be paid by the withdrawal from the applicant's debit account, and not by bank transfer, the only other mode of payment provided for in Form 1010. This follows from the wording of the sentence that the appeal fee 'is paid via the enclosed EPO form 1010'. Payment by bank transfer would require an additional act, i.e. that very transfer.
- The representative asserts it regularly paid via the debit account: in any case it follows from the file in the present case that the fees due for the application in issue were paid that way.
- By the rather detailed statement of grounds of appeal filed together with the notice of appeal it can be excluded that the appeal was not meant seriously.

3.4.2 Date when payment would have taken effect

Pursuant to point 6.3, second sentence, ADA 2015 quoted above, 'Provided there are sufficient funds in the deposit account on the date of receipt of the debit order by the EPO, that date will be considered as the date on which the payment is made' (emphasis added). According to information received from the EPO's Treasury & Accounting Department, on 24 December 2015, i.e. the date of receipt of the notice of appeal, the deposit account had a balance sufficient to cover the appeal fee of ¤ 1,860 (the increase of the fee to ¤ 1,880, valid as from 1 January 2016, would not have been relevant). That date therefore would be the date of payment under the case law referenced above.

3.4.3 Whether the case-law is convincing

Equalling the intention to pay to a payment is detached from the reality of business transactions and is therefore unacceptable. The long standing case law of the boards of appeal on this matter can therefore not be followed. This position is explained in greater detail below.
In T 1265/10 the board held (at point 15):

The Board would also like to highlight that the issue is not whether the opponent intended to pay. An intention to pay is certainly not enough in order to actually effect payment. For example, it would not have been enough to indicate in the notice of opposition that payment would be made by cheque, and no corresponding cheque had been enclosed. But the statement "we want to pay" is different in its legal significance from the statement "we want to authorise the EPO to withdraw the fees for a determined purpose from our account" in that the intention to authorise already allows the Office to act on such authorisation and carry out such intent where the EPO under the deposit account system already holds such money in trust.

The board agrees that
- 'An intention to pay is certainly not enough in order to actually effect payment'
but fully disagrees with the statement according to which
- 'the intention to authorise already allows the Office to act on such authorisation and carry out such intent where the EPO under the deposit account system already holds such money in trust'.

An intention to make a payment remains a (mere) intention and not a payment, no matter whether or not the EPO has access to sufficient funds of the person or entity intending to pay which would, as a matter of fact, make it possible for the EPO to avail itself of those funds. The reason is that the EPO is simply not entitled to do so under its own rules.

Pursuant to point 6.2 of the ADA 2015, quoted above,
Debiting occurs only on the basis of a debit order signed by the account holder.

Point 6.3 of the ADA 2015 reads:
The debit order must be clear, unambiguous and unconditional. It must contain the particulars necessary to identify the purpose of the payment, including the amount of each fee or expense concerned, and must indicate the number of the account which is to be debited. Provided there are sufficient funds in the deposit account on the date of receipt of the debit order by the EPO, that date will be considered as the date on which the payment is made. [Emphasis added.]

The requirements for a valid debit order laid down in points 6.2 and 6.3 are clearly not met by any 'circumstantial authorisation ... based on an appraisal of the circumstances', as accepted in T 170/83 (at point 6, quoted in the applicant's letter of 2 May 2016, at page 2), which was cited and followed in T 1265/10.
The sentence in the notice of appeal of 24 December 2014 reading:
'The appeal fee is paid via the enclosed EPO form 1010' obviously is not a 'clear, unambiguous and unconditional' debit order under point 6.3 of the ADA 2015, but a mere statement that such a debit order is supposed to be given, and thus payment made, by means of a different document, i.e. Form 1010. This document not having been attached to the notice of appeal, no debit order and thus no payment has been made by means of the notice of appeal alone."

[end of quotation]

Regarding the two struck-through paragraphs, the board is no longer of the view that the reference to Form 1010 in the notice of appeal might be considered as having an impact on the application of the boards' case law on this matter; the corresponding paragraphs under point 3.4.1 have therefore been struck through. In the annex, the board had in any case, favourably for the appellant, already based its assessment on the absence of such impact.
The only point that the board wishes to add relates to the discussion at the oral proceedings regarding an amendment of ADA 2014 that continued to subsist in ADA 2015, i.e. point 6.3, especially the first sentence, which is identical in both versions. It reads: "The debit order must be clear, unambiguous and unconditional". The appellant was of the opinion that the ADA 2015 criteria were similar to those established in T 1265/10, which had thus entered ADA 2015 and which had not been present in ADA 2002 (at point 6.3).
The board confirms that the above sentence was not present in point 6.3 of ADA 2002 (Arrangements for deposit accounts and their annexes (valid as at 1 March 2002), Supplement to OJ EPO No. 2/2002) corresponding to point 6.3 of ADA 2015 (and ADA 2014).
The board however sees no reason to make a further inquiry into this point, simply because the sentence that "the debit order must be clear, unambiguous and unconditional" (emphasis added), in the board's view, cannot be considered as an endorsement by the EPO of the critical sentence in T 1265/10, point 15 (quoted above, at point 3.4.3) that "the intention to authorise already allows the Office to act on such authorisation and carry out such intent where the EPO under the deposit account system already holds such money in trust" (emphasis added). The decisive issue is whether such an intention can be considered to be tantamount to an order, a view that the board rejected above (point 3.4.3).

2. First auxiliary request: referral of a question to the Enlarged Board

In the oral proceedings the appellant requested, as a first auxiliary request, that the following question be referred to the Enlarged Board of Appeal:
Is an intention to authorize a debit account sufficient to allow the Office to act on an authorization and carry out such intent, in a situation where the debit account, the fee that is due and the account holder are clearly identifiable, and where the debit account holds sufficient funds?

According to Article 112(1)(a) EPC, a board of appeal shall refer a question to the Enlarged Board of Appeal if it considers that a decision is required to ensure uniform application of the law or if a point of law of fundamental importance arises.
In the present case the board does not consider that, for the purposes of deciding on the present case, a decision is required on the above question either to ensure uniform application of the law or because a point of law of fundamental importance has arisen.
Moreover a question involving an important point of law need not be referred to the Enlarged Board of Appeal if the board of appeal hearing the case considers itself able to answer it beyond doubt; see J 5/81 (OJ EPO 1982, 155, headnote 2). As the board considers this to be the case, an answer by the Enlarged Board of Appeal to the appellant's question is not required. The board explained extensively in the part of the annex that is reproduced under point 1 above why an intention to authorise in the meaning of the question is not sufficient.
At the same time, the board thus gave reasons within the meaning of Article 20(1), first sentence, RPBA for the deviation from the approach followed in the mentioned earlier decisions of other boards. The board is convinced that its interpretation of the relevant provisions of ADA 2015 is compulsory. (Those provisions are based on Article 5(2) and 7(2) of the Rules relating to Fees, which in turn were adopted with regard, in particular, to Article 33(2)(d) EPC.) As a consequence, the board sees no reason to refer the question to the Enlarged Board of Appeal to ensure uniform application of the law.

3. Second auxiliary request: re-establishment of rights

Pursuant to Article 122(1) EPC,
an applicant for ... a European patent who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit vis-à-vis the European Patent Office shall have his rights re-established upon request if the non-observance of this time limit has the direct consequence of causing ... the loss of any other right or means of redress.
The request for re-establishment of rights of an applicant with a professional representative acting on its behalf is only allowable if both the applicant itself and its representative have met the necessary standard of care (see T 1962/08, Reasons 5.1).
Whether or not these conditions, together with the concomitant requirements of the Implementing Regulations, are met and the request for re-establishment is to be granted (cf. Article 122(2) EPC) is discussed below.

3.1 Whether re-establishment of rights is applicable

3.1.1 Loss of rights or means of redress

The two-month time limit for filing an appeal (Article 108, first sentence, EPC) against the decision of the examining division of 19 October 2015 expired on 4 January 2016 (Rules 126(2), 131(1), (2) and (4) and 134(1) EPC). The appeal fee not having been paid on or before that date, the appeal would be deemed not filed within the appeal time limit (Article 108, second sentence, EPC), unless the request for re-establishment of rights was granted. The above criterion is therefore met.

3.1.2 Inability to observe a time limit vis-à-vis the EPO

The board affirms its preliminary findings made in the annex (see point 3.3.1, page 19):
According to T 413/91 (at point 4), the word "unable" implies an objective fact or obstacle preventing the required action. Such an obstacle could, for example, consist in a wrong date inadvertently being entered in a monitoring system or an outside agency influencing the observance of the time limit (for example a delay in delivery service).

In the present case, the representative, on 28 December 2015, upon reading the "document acknowledgment of receipt" as received from the EPO and his firm's invoice, did not notice that receipt of Form 1010 was not acknowledged by the EPO. The representative was not alerted either to this fact before expiry of the time limit for paying the appeal fee on 4 January 2016. The representative in particular has not submitted that, before expiry of that time limit, he read Form 1038E filed by his assistant on 24 December 2015 which did not mention Form 1010 in the table of documents filed. As a consequence of his unawareness of the error which occurred upon filing the notice of appeal, he was unable to observe that time limit.

3.1.3 Re-establishment not ruled out by Rule 136(3) EPC

Rule 136(3) EPC reads as follows:
Re-establishment of rights shall be ruled out in respect of any period for which further processing under Article 121 is available and in respect of the period for requesting re-establishment of rights.

Re-establishment of rights is not ruled out by Rule 136(3) EPC, because further processing under Article 121 EPC is not available in respect of the time limits mentioned in Article 108 EPC; see Article 121(4) EPC. Those time limits include the two-month period for filing an appeal laid down in its first sentence, which, according to its second sentence, is complied with only upon payment of the corresponding fee.

3.2 Whether the request for re-establishment is admissible

Rule 136 EPC, in pertinent part, reads as follows:
(1) Any request for re-establishment of rights under Article 122, paragraph 1, shall be filed in writing within two months of the removal of the cause of non-compliance with the period, but at the latest within one year of expiry of the unobserved time limit. ... The request for re-establishment of rights shall not be deemed to have been filed until the prescribed fee has been paid.
(2) The request shall state the grounds on which it is based and shall set out the facts on which it relies. The omitted act shall be completed within the relevant period for filing the request according to paragraph 1.

3.2.1 Rule 136(1) EPC: two months from removal of the cause of non-compliance

The request was filed, and the fee paid, on 21 June 2016. According to the representatives' submissions, the date when the representative learnt of the failure to pay the appeal fee was the date of receipt of the notice of loss of rights, i.e. 21 April 2016. If that day of receipt was to be considered as having removed the cause of non-compliance with the period for filing an appeal under Article 106(1) EPC, then the request for re-establishment of rights would have been filed within the prescribed two-month period, and also within one year of expiry of the appeal time limit of 4 January 2016. The requirements of Rule 136(1) EPC would then have been met.
(a) The annex
In the annex (see point 3.3.2, pages 20 to 21) the board however arrived at a different provisional conclusion. It is set out below in so far as it is still pertinent:
In its decision in T 315/90 (at point 6, affirmed by T 1465/08, point 2.1), the board held that the date of the removal was the date at which the appellants should have discovered the committed error if they had taken all due care, due care being a permanent obligation. In that case, the date of removal was not necessarily the date of receipt of the communication notifying a loss of rights. More generally, holding that due care was an obligation extending over the whole of the proceedings, the case law of the boards of appeal recognises that the cause of non-compliance may be removed already at the point in time when a representative taking all due care would have become aware that the time limit had been missed, even though in reality he or she had become aware thereof at a later stage only (cf. T 1561/05, point 2.1.3, and the cases cited there; see also T 1486/11).
In the present case, the representative was unable to observe the deadline for paying the appeal fee, which expired on 4 January 2016. As set out above [see text portion quoted under point 3.1.2], non-compliance with that period was the consequence of the fact that he did not realise from his reading of the "document acknowledgment of receipt" as received from the EPO and his firm's invoice, that receipt of Form 1010 was not acknowledged by the EPO. The representative has not submitted that, before expiry of the time limit, he had read Form 1038E filed by his assistant on 24 December 2015 which did not mention Form 1010 in the table of documents filed.
Applying the due-care requirement in the present context, a diligent representative, in the board's view, ought to have
- checked Form 1038E filed by the formalities officer on 24 December 2015 ...,
- noticed that the EPO had not confirmed receipt of Form 1010 and, consequently, that, despite the indication of the payment in the firm's invoice, such payment had not been made, taking into account that use of Form 1010 was the intended way of payment (independent of whether or not it was the proper way).
This oversight of the representative cannot be excused, even if it should have been isolated. Different from an isolated mistake that an assistant may make, such a mistake is not excusable in a representative. See R 18/13, at point 19.
As a consequence, the date when the cause of non-compliance with the time limit for paying the appeal fee was removed was not the date of receipt of the notice of loss of rights, i.e. 21 April 2016, but 4 January 2016, when the time limit expired. The date 28 December 2015 on which the representative should have discovered omission of the payment cannot yet be considered to be the relevant date as it was still within the time limit for payment. It follows that the request for restoration filed on 21 June 2016 does not meet the two-month time limit. Since the corresponding fee was also paid on 21 June 2016, the request is deemed not to have been filed.

(b) The appellant's reaction
In its reply to the annex of 17 November 2017 (page 5, first two paragraphs), the appellant, on the basis of a reproduction and annotation of parts of the EPO publication "Case Law of the Boards of Appeal of the EPO" (Case Law) (III.E.4.1.1a, first three paragraphs), objected to the board's provisional view. While acknowledging that the date of removal was not necessarily the date of receipt of the communication notifying a loss of rights, the appellant insisted that under several decisions by the boards cited there "the time period for reestablishment only started to run from a date where somebody noticed that something was amiss" (see second paragraph in fine). In the oral proceedings of 19 December 2017 the appellant clarified its view by citing the two further cases, T 1486/11 and T 315/90.
In T 1486/11 the appeal fee had been paid out of time, i.e. together with the filing of the grounds of appeal. The board considered that the date of late payment had triggered the two-month time limit for the request for re-establishment, not the day on which the representative had personally taken note of the loss-of-rights communication or the date when the communication had arrived at his office, i.e. more than two months later. The board reasoned: "Had all due care been exercised, this payment could not have been made without its belatedness being noticed" (see point 1.6 in fine). Similarly, according to the appellant, in T 315/90, there had been positive proof that something was wrong. The attorney signed "the statement of grounds prepared by his external collaborator without consulting the file, which would have enabled him to notice that the time limit for filing this statement had not been observed" (see point 9).
In the present case, however, the problem related to the assistant carrying out the representative's instructions and the representative detecting mistakes made by the assistant in carrying out these instructions. Clear evidence was needed to show that somebody had been aware that something was amiss with Form 1010. However, nobody was aware that anything was wrong until April 2016 (i.e. when the loss-of-rights communication was received); the representative had failed to see that Form 1010 was not mentioned in the EPO's acknowledgement of receipt.
In addition, arguing that on 28 December 2015 the representative could have and should have seen it would create a perverse incentive: had the representative not looked at the acknowledgement of receipt, then there would have been no problem. This could not be the intention of the Convention; rather, it would be contrary to its spirit.

(c) The board's position
The board considers the essential criterion relied on by the appellant in this context to be irrelevant, i.e. whether in all the cases cited "the time period for re-establishment only started to run from a date when somebody noticed that something was amiss". The reason is that, in the board's understanding, the case law is based on the general principle that due care is a permanent obligation (see the extract from the annex at point 3.2.1(a) above). That is why, according to the established case law, the date of the removal is supposed to be the date at which the appellant's representative shouldhave discovered the committed error if he had taken all due care, and not a later date when he did in fact detect the error.
For different reasons, however, the board does accept the appellant's view that the date when the representative did in fact learn of the omitted time limit for paying the appeal fee, i.e. the date of receipt on 21 April 2016 of the loss-of-rights communication, is decisive. This is because the board has doubts as to the soundness of the above way of applying the "permanent-obligation" principle in the case law to the removal of the cause of non-compliance with a period.
Due care may be a permanent obligation for a party and its representative.
But, first, the letter of the law, i.e. Article 122(1) and Rule 136(1) EPC (formerly combined in Article 122(1) EPC 1973), does not suggest that "due care" mentioned in the former provision only should be an unwritten further criterion of the latter.
Second, as to the view of a perverse incentive (see point 3.2.1(b) in fine) in the sense that had the representative not looked at the EPO's receipt, then there would have been no problem, shows that mingling "due care" with "removal" would entail the need for applying the case law on "due care" to the "removal" criterion. In the present case it would need to be examined whether there was a need for a second person to check compliance and if so, whether in the case of an assistant as second person an error could be excused, but not if the second person was a representative.
Third, if "due care" is applied in determining the date of the removal, because it is a "permanent obligation", the question would arise as to why "due care" should not also be assessed in determining whether or not there was an inability to observe a time limit. This would run counter to the passage from T 413/91 (point 4) reading: "Only when such a fact made the party unable to observe the time limit would the circumstances of the case be examined as to the second condition 'in spite of all due care'." Applying the due-care criterion in this context would however even be in line with an unbiased reading of Article 122(1) EPC according to which "an applicant ... who, in spite of all due care ... having been taken, was unable to observe a time limit ...". In the present case, for example, one might well argue that, despite his unawareness of the error of not having submitted Form 1010 (see above, point 3.1.2), the representative was not unable to observe the time limit for paying the appeal fee. It might be reasoned that due care would have required that, on 28 December 2015, he had recognised that Form 1010 had not been sent and, given that the time limit for payment only expired on 4 January 2016, he was not unable to pay. As a consequence, re-establishment of rights would not be an applicable remedy in the present case.
The above shows that the current practice of applying the due-care requirement in the context of removal of the cause of non-compliance with a period within the meaning of Rule 136(1) EPC, may well be seen as extending the meaning of the due-care requirement in a way that enlarges the scope of the essentially substantive criterion by adding to it the function of an extraordinary preliminary admissibility/ applicability hurdle. This approach to the "removal" criterion, which cannot be based on the letter of the law, is therefore doubtful.
In the present case the board leaves the question as to the approach to be followed open due to the following considerations.
In general, the reason why an omission should have been discovered before receipt of the loss-of-rights communication, removing the cause of non-compliance with the period, is different from the reason why the omission to comply with the period could or could not have been avoided. Examples are provided by the cases discussed above: in T 1486/11 the belatedness of the fee payment should have been noticed upon payment of the fee together with the filing of the grounds of appeal, and not more than two months later upon receipt of the Rule 112(1) communication. Similarly, in T 315/90 the attorney should have noticed the error upon signing the statement of grounds had he consulted the file. In both cases the lack of due care led the board to find the removal to run from the respective dates, and in both cases the lack of due care in noticing the omission was different from the due-care issue surrounding the missing of the respective underlying time limit, i.e. belated fee payment and belated filing of the notice of appeal respectively.
In the present case, however, the due care to be exercised according to the case law in connection with the "removal" criterion is identical with one due-care aspect underlying the missed time limit, i.e. the payment of the appeal fee. For the question is whether the representative should have detected the non-filing of Form 1010 before expiry of the time limit for payment of the appeal fee: if he should have discovered it, then the re-establishment time limit would start (deferred to the end of the period for filing the notice of appeal, i.e. from 28 December 2015 to 4 January 2016) and, for the same reason, in the subsequent substantive analysis, due care in complying with the time limit would also have to be denied.
The board leaves the question open because the outcome may differ in only one respect: if the removal took place on 4 January, then the request for re-establishment may be deemed not to have been filed triggering the reimbursement of the re-establishment fee. In the analogous situation of the fee for petition for review paid outside the period under Article 112a(4), third sentence, EPC, the Enlarged Board decided that the petition for review was deemed not to have been filed and, in the absence of a legal basis for paying the fee involved, ordered its reimbursement (see R 4/15). Conversely, if the request for re-establishment is considered to have been filed in good time, then it will have to be rejected on its merits (subject to compliance with the other admissibility requirements), and the re-establishment fee will not be reimbursed. The appellant having expressly preferred the latter approach (see point VIII above) cannot be disadvantaged if the board follows it and, in that case, the fee is not reimbursed.

3.2.2 Rule 136(2) EPC

The request of 21 June 2016 stated the grounds and facts for re-establishment and was accompanied by evidence. The omitted act, i.e. the payment of the appeal fee had already been completed on 2 May 2016 and made again, together with the filing of the request for re-establishment.

3.2.3 Conclusion

In the light of the foregoing, the request for re-establishment of rights is admissible.

3.3 Whether the request for re-establishment is allowable

Pursuant to Article 122(1) EPC, the request will be allowed if the applicant and its representative, in spite of all due care required by the circumstances having been taken, were unable to observe the appeal time limit.

3.3.1 The principles enunciated in the case law

(In general, see Case Law, III.E.5.)
For cases where the cause of non-compliance with a time limit involves some error in the carrying out of the party's intention to comply with the time limit, the case law has established the criterion that due care is considered to have been taken if non-compliance with the time limit results either from exceptional circumstances or from an isolated mistake within a normally satisfactory monitoring system (Case Law, III.E.5.2).
It is well established that a professional representative may entrust routine tasks such as noting time limits to an assistant, provided that (i) a suitable person is chosen for that purpose, (ii) he or she is given proper instructions and (iii) the representative exercises reasonable supervision over the work of the assistant (see T 2336/10, Reasons 15, quoting from J 5/80, OJ EPO 1981, 343, paragraph 7).
An isolated mistake by an assistant that happens in a normally satisfactory system is excusable. The appellant or his representative must plausibly show that a normally effective system for monitoring time limits prescribed by the EPC was established at the relevant time in the office in question (Case Law, III.E.5.4, first paragraph).
In a large firm where a large number of dates have to be monitored at any given time, it is normally to be expected that at least one effective cross-check is built into the system. The cross-check must be independent of the person responsible for monitoring time limits (Case Law, III.E.5.4.4, first paragraph).
As to the processing of outbound mail, due care will be considered to have been taken if non-compliance with the time limit results from an isolated mistake (by an assistant) within a normally satisfactory system of processing outbound mail. Irrespective of whether or not a large firm is concerned, the duty of at least one effective cross-check built into that system is dispensed with in this situation. The reason is that, different from the monitoring of time limits, the risk of an error in the processing of outbound mail is low because such processing generally involves the execution of straightforward steps (see T 836/09, point 5.2, third paragraph).
Different from an isolated mistake made by an assistant, a mistake made by a representative, whether isolated or not, is not excusable. See R 18/13, point 19.

3.3.2 Applying the case-law principles to the case at hand

(a) Clear instructions required
The board considers, in line with previous case law, that "filing an admissible appeal is not a routine task, but rather a complicated task which needs clear instructions from the professional representative to his assistant." See T 1764/08, point 18 (emphasis added).
In the present case this means that the representative would have had to instruct the assistant to not only file the letter constituting the notice of appeal, which the representative created and forwarded to her. The representative would also have had to instruct her, expressly and clearly, and in addition to the forwarding of the notice of appeal, to pay the appeal fee.
In the oral proceedings, a representative of the appellant commented on the impact of the line in the letter, "The appeal fee is paid via the enclosed EPO form 1010". He stated that this was a sufficient instruction to the assistant who was supposed to read the letter and take the steps required by its contents.
The board disagrees holding that it is not enough to rely on the assistant's deducing the duty to file the payment form from the contents of the letter.
While the steps for paying the appeal fee in the appropriate manner may be considered to be a routine task (comparable in complexity to, for instance, generating a standard notice of appeal to be completed by the representative), it would have been the responsibility of the representative to give express and clear instructions to the effect that the appeal fee had to be paid.
Failure to give such instructions constitutes in itself a lack of due care on the part of the representative; such lack of due care is attributed to the applicant.

(b) Not checking the receipt an "isolated mistake"?
It is therefore only for the sake of completeness that the board also addresses the due-care issue already referred to in the context of removal of the cause of non-compliance with the time limit for paying the appeal fee. The situation to be assessed is the following: the assistant failed to pay the appeal fee by filing Form 1010 together with the notice of appeal on 24 December 2015, and the representative failed to recognise this omission upon checking the EPO's acknowledgement of receipt of filed documents on 28 December 2015.
- Comparison with the confusion of the outbox
In the oral proceedings the appellant's representatives advanced the argument that this situation was comparable to the one underlying case T 836/09 where the assistant who had put a document in the wrong outbox of the patent law firm (German Patent and Trademark Office (DPMA) instead of EPO) was excused.
This argument cannot be accepted. First, putting a document in an outbox is a straightforward routine task on the lowest level requiring very little thought. Conversely, while paying the appeal fee may also be a routine task, it is placed on a higher level as it requires training on the formal rules of payment and complying with those rules. Second, it was agreed between the representative and his assistant that the former would check the latter's work in the period between Christmas and New Year, given the latter's heavy workload on 24 December 2015. From this very fact it must be deduced that the representative in charge himself did not liken the task of filing an appeal, including paying the appeal fee, to putting a letter into an outbox either.
- Excusable mistake in the framework of a co-operation agreement?
At the outset it should be noted that the need for a double-check of the assistant's work by the representative in the special circumstances described above arose from their agreement. It is therefore immaterial that, in the absence of such special circumstances, a double-check, unlike in the case of monitoring time limits, might not have been required by the EPO's case law (cf. T 1355/09, point 1).
And, due alone to this need-inspired agreement, the alleged perverse incentive for a representative not to be involved in checking acknowledgements of receipt in order to avoid making per se inexcusable mistakes (see under "removal" above, 3.2.1(b) in fine, third paragraph) is obviously beside the point.
In the framework of giving effect to the above agreement, the representative did make a mistake, and this mistake cannot be excused. Different from an isolated mistake made by an assistant, a mistake made by a representative, whether isolated or not, is not excusable. See R 18/13, point 19. The Enlarged Board of Appeal, in that decision, based its finding on the legislative history of the EPC (see the discussion at point 21).
In this context it must be stressed that the point raised in the oral proceedings that the attorney doing the check thought more of the substantive part (than of formalities such as payment) is of no assistance to the representative who did not spot that Form 1010 was missing. On the contrary, the representative having agreed to check the assistant's work had to check it thoroughly. It is contradictory to claim on the one hand there was a perverse incentive not to check the acknowledgement of receipt if the representative "replacing" an assistant was held to a strict standard of responsibility, and at the same time ask for understanding of the fact that he was more occupied with substance than with formalities, the latter being the "replaced" assistant's task. Furthermore, the representative, being supposed to instruct assistants in their tasks, is not only supposed to know these tasks, but also to attribute them the proper importance when "replacing" an assistant.
For the sake of completeness, it should be added that it is immaterial for the above analysis that the representative checked the invoice to the client and spotted an item relating to the appeal fee (see point V, second to last paragraph). This invoice can obviously not prove payment having been made to the EPO.

4. Overall result

The appellant, through its representatives, did not pay the appeal fee within the appeal time limit, and the request for re-establishment of its right to pay the appeal fee within the prescribed time limit is admissible but not well founded. As payment of the appeal fee was received on 2 May 2016 and again, together with the request for re-establishment, on 21 June 2016, i.e. outside of the appeal time limit of 4 January 2016, the notice of appeal, which is deemed to have been filed on the payment date as well (Article 108, second sentence, EPC), was also filed out of time. As a consequence, the board considers that the appeal is deemed not to have been filed.


Order

For these reasons it is decided that:

1. The request to issue a communication under Rule 112(2) EPC stating that the appeal fee has been paid in time is refused.
2. The request for referral to the Enlarged Board of Appeal is refused.
3. The request for re-establishment of rights is refused.
4. The appeal is deemed not to have been filed.
5. The appeal fee is reimbursed.

This decision T 0198/16 (pdf) has European Case Law Identifier ECLI:EP:BA:2011:T126510.20110415. The file wrapper can be found here. Wordcloud image created on https://www.wordclouds.com/.

T1833/14 - A tough composition

Delta Patents Patent Law -




This case concerns an appeal by an opponent against a decision of the opposition division rejecting an opposition filed by the opponent/appellant.
The patent in suit relates to a tougher polymer composition used for making moulded articles with injection moulding. The appellant lodged the appeal on the grounds of an alleged public prior use anticipating granted claim 1 and inventive step.

The appellant argued that a skilled person could have easily reproduced the claimed composition starting from a product which was publicly sold before the filing date of the patent in suit.

However, the BoA stated that mere public disposal of a product does not give the skilled person sufficient information on how to make that product. In summary, the criteria of sufficiency of disclosure for a polymer (or composition) which demand also the disclosure of the method of preparation of such polymer (or composition) in the patent application, must also apply to the reproducibility without undue burden of a product in the market. The appellant did not show that any information in that respect was available before the filing date, thus the BoA could not consider a sample of the publicly available product as being part of the state of the art according to Art. 54(2).

Interesting also to note that the BoA contested an inventive step reasoning of the respondent (patent proprietor): the comparative examples disclosed in the application as filed did not relate to compositions differing from the claimed composition only in the distinguishing features of the granted claim with the closest prior art(s), thus the effect of the distinguishing feature over the closest prior art(s) could not have been demonstrated based on those examples, and the technical problem originally formulated by the respondent needed reformulation.


Summary of Facts and Submissions
I. The appeal by the opponent lies from the decision of the opposition division rejecting the opposition filed against European patent No. 2 243 803.
II. The patent in suit is based on an European patent application which was filed as a divisional application of the parent application 08 167 852.6 on the basis of which European patent 2 182 030 was granted. That patent was maintained in amended form during first instance proceedings and the patent proprietor lodged an appeal against that decision (T 1776/14). None of the two opponents, one of which was the same opponent as in the present case, filed an appeal. The patent proprietor's appeal was eventually withdrawn before the oral proceedings had taken place and after receipt of the Board's preliminary opinion.
III. The patent in suit was granted on the basis of 12 claims, of which claim 1 read as follows:
"1. Heterophasic polypropylene composition comprising
- 73 to 98 wt.-% of a polypropylene matrix (M) and- 2 to 27 wt.-% an elastomeric copolymer (E) being dispersed in the matrix (M), based on the polypropylene matrix (M) and the elastomeric copolymer (E),
wherein the elastomeric copolymer (E) comprises units derived from- propylene and- ethylene and/or C4 to C20 alpha-olefin,
and wherein further,- Mz/Mn of the xylene cold soluble fraction (XCS) of the heterophasic polypropylene composition is below 15.2, wherein Mz is the z-average molecular weight measured according to ISO 16014-4:2003 and Mn is the number average molecular weight measured according to ISO 16014-4:2003,- the Mz of the xylene cold soluble fraction (XCS) of the heterophasic polypropylene composition is at least 950 kg/mol,- the intrinsic viscosity of the xylene cold soluble fraction (XCS) of the heterophasic polypropylene composition is above 2.1 dl/g measured according to ISO 1628-1 (at 135 °C in decaline), and- the MFR2 (230°C) of the heterophasic polypropylene composition measured according to ISO 1133 is more than 25 g/10 min."
Claims 2 to 10 were dependent on claim 1. Claims 11 and 12 were directed to articles comprising a composition according to any of claims 1 to 10 and to a process for the preparation of a composition according to any of claims 1 to 10, respectively.
IV. In the present decision the "xylene cold soluble fraction" mentioned in granted claim 1 will be abbreviated as "XCS" and the features of granted claim 1 which are related thereto will be referred to a Mz/Mn(XCS), Mz(XCS) and IV(XCS). |
V. A notice of opposition to the patent was filed requesting revoca­tion of the patent in its entirety.
VI. In the contested decision the following documents were inter alia cited:
D1a: Invoice corresponding to the sale of Rigidex®P450xHP60 to Groku Kunststoffe GmbH in August 2008
D2a: Datasheet Rigidex P 450xHP60, March 2008
D3: Production analysis of batch DHB1082 dated 9 February 2008
D4: Declaration of Gaetane Hallot dated 7 September 2012
D5: Polypropylene and other Polyolefins, Elsevier, 1990, pages 324-327
D6: WO 01/58970
D7: Vrachtbrief from Ineos Europe Ltd. to Groku Kunststoffe GmbH concerning polypropylene resin 450xHP60, lot number PHBE1082A, 13 August 2008
D8: Additional production data sheet, 450xHP60, dated 9 February 2008
D9: Declaration of Veerle Gonniseen, dated 17 January 2014
D10: US 6 759 475
In that decision the opposition division held that the patent in suit satisfied the requirements of sufficiency of disclosure and that an alleged public prior use (Rigidex®P450xHP60) supported by D1a, D2a, D3, D4 and D7 to D9 was not part of the state of the art. An inventive step was further acknowledged starting from D10 as closest prior art. Also, it was held that although D6 was not the closest prior art, the same conclusion would be reached when starting from D6 as closest prior art.
VII. The opponent (appellant) lodged an appeal against the above decision and requested that the decision of the opposition division be set aside and the patent be revoked. Together with its statement of grounds of appeal the following document was filed:
D11: Declaration of Hermann Böcker, dated 20 October 2014
VIII. In the reply to the statement of grounds of appeal the patent proprietor (respondent) requested that the appeal be dismissed (main request) or, alternatively, that the patent be maintained in amended form according to any of the first to the third auxiliary requests filed therewith. Also, the following documents were filed:
D12: Effect of xylene solubles in biaxially oriented polypropylene, S. Kim and V.M. DiNardo, ANTEC 2003, pages 258-262
D13: Gel Permeation Chromatography of Ethylene-Propylene Copolymerization Products, T. Ogawa and T. Inaba, J. Appl. Pol. Sci., Vol. 21, pages 2979-2990, 1977
IX. In a communication accompanying the summons to oral proceedings issued by the Board, issues to be discussed at the oral proceedings were specified.
Regarding novelty it was in particular indicated that it might have to be discussed whether or not the alleged public prior use constituted by a sample of "Polypropylene Granulat 450xHP60" with charge reference "PHBE1082A" could be held to belong to the state of the art, in particular taking into account the findings of decision G 1/92 (OJ EPO 1993, 277) according to which one of the necessary condition for a product to belong to the state of the art is that it may be reproduced without undue burden by the skilled person (see section 6.3 of the communication). In that respect, it was further noted that in its notice of opposition the appellant had argued that the combination of parameters defined in granted claim 1 could only be obtained using a specific catalyst system.
X. With letter of 12 October 2017 the appellant further filed:
D14: EP-A-2 072 546
XI. With letter of 7 November 2017 third party observations pursuant to Article 115 EPC were filed, whereby documents D14 to D17 were submitted, of which only D14 is relevant for the present decision.
XII. Oral proceedings were held on 7 December 2017 in the presence of both parties.
XIII. The appellant's arguments, as far as relevant to the operative main request (patent as granted), were essentially as follows:
Alleged public prior use
(a) Claim 1 was anticipated by the public sale of Rigidex®P450xHP60 as shown by D1a, D2a, D3, D4, D7 to D9 and D11.
(b) Regarding the question of the reproducibility of Rigidex®P450xHP60, the skilled person had significant experience in preparing compositions such as those defined in granted claim 1. Therefore, making a composition having the features specified in granted claim 1 was not difficult. Although it would be more difficult to obtain the same mechanical properties as the Rigidex product, those properties were not specified in granted claim 1 and were, thus, not relevant to the question of novelty.
Also, the product of granted claim 1 was very similar to those prepared in D6 and the skilled person would know how to adapt D6 in order to prepare such a product.
It was further not reasonable that a product according to granted claim 1 which was in the public's hands before the filing date of the patent in suit could be held not to anticipate the subject-matter of granted claim 1.
(c) For those reasons, granted claim 1 was anticipated by the public prior use Rigidex®P450xHP60.
Inventive step
(d) Contrary to the opposition division's view, D6 was a suitable starting point for the assessment of the inventive step.
The subject-matter of granted claim 1 differed from example 11 of D6 only in that it exhibited a higher Mz(XCS). In particular, the feature "Comp. B IV" disclosed in Table 1B on page 31 of D6 corresponded to the feature IV(XCS) specified in granted claim 1, as concluded by the opposition division.
Since no technical effect was shown in relation to that distinguishing feature, the problem to be solved was to provide an alternative composition. In that respect, the examples of the patent in suit were not related to the above identified distinguishing feature.
Considering that it was indicated in D6 and also known from D5 that high molecular weights were related to improved impact properties, the skilled person would obviously maximise the molecular weight of the rubber fraction to improve impact resistance. Increasing the molecular weight inevitably resulted in an increase in Mz(XCS). The value of at least 950 kg/mol in granted claim 1 was arbitrary and could not confer an inventive step. Besides, since each of Mn(XCS), Mz(XCS) and Mw(XCS) increased in a similar manner with increasing molecular weight, the ratio Mz/Mn(XCS) would not change significantly when Mz(XCS) increased. In that respect, it was well known in the art that the molecular weight could be increased merely by reducing the amount of hydrogen used during the polymerisation process.
(e) Alternatively, the subject-matter of granted claim 1 differed from the closest prior art constituted by example 17 of D10 only in that the feature Mz/Mn(XCS) could not be proven beyond reasonable doubt to be inside the range defined in granted claim 1. To arrive at that conclusion, it had to be taken into account that:
- it was derivable from D10 that component Y-7 of said example 17 did not contribute to the XCS component;
- applying the Mark-Houwink relationship using the parameters of polypropylene, the weight average molecular weight of the xylene cold soluble fraction of components BY-1 and X-7 were Mw(XCS/BY-1) = 1250 kDa and Mw(XCS/X-7) = 270 kDa, respectively, which led to a weight average molecular weight of the xylene cold soluble fraction of the whole composition of Mw(XCS) = 600 kDa;
- a Mw(XCS) of 600 kDa whereby one third of the distribution has an Mw(XCS) of 1250 kDa had to result in a Mz(XCS) of at least 950 kDa;
- in a distribution in which two thirds of the molecules had a molecular weight of 270 kDa, Mn(XCS) had to be relatively close to this value.
Since no technical effect was shown in relation to said distinguishing feature (Mz/Mn(XCS)), the problem to be solved was to provide an alternative composition.
In order to arrive at the subject-matter of granted claim 1, one only had to reduce the ratio Mz/Mn(XCS) so as to be below 15.2. However, since that range constituted an arbitrary distinction, it would be easy for the skilled person following the teaching of D10 to make a composition similar to that of example 17 of D10 but in which the Mz(XCS) and Mn(XCS) values were slightly different such that Mz/Mn(XCS) was below 15.2.
(f) Should the arguments of the respondent that the subject-matter of granted claim 1 differed from that of example 17 of D10 in the Mz(XCS) value be agreed upon, then the same line of argumentation as in respect of D6 applied.
(g) For those reasons, the subject-matter of granted claim 1 was not inventive.
Admittance of the late-filed document D14
(h) Example CE1 of D14 satisfied all the features of granted claim 1 apart from Mz(XCS) and Mz/Mn(XCS). Since Mn(XCS) was indicated, only Mz(XCS) was missing. Considering that the process used in example CE1 of D14 was very similar to that of example E2 of the patent in suit, which was according to granted claim 1, the missing features Mz(XCS) and Mz/Mn(XCS) had to be implicitly satisfied by example CE1 of D14.
Since D14 was a document of the respondent, the missing feature Mz(XCS) was in the hand of the respondent and he should have provided it in order to clearly demonstrate novelty, which was not done.
Document D14 was well known to the parties and to the Board since it had been dealt with in details in the parallel case T 1776/14 (see section II above). Besides, in said parallel case, the same Board as in the present case had indicated in its preliminary opinion that the missing feature over D14 (which was also related to Mz(XCS)) appeared to be implicitly disclosed. Therefore, the same conclusion should be reached in the present case.
Under such circumstances, D14 was prima facie highly relevant and should be admitted to the proceedings.
XIV. The respondent's arguments, as far as relevant to the operative main request (patent as granted), may be summarised as follows:
Alleged public prior use
(a) The alleged public prior use in respect of Rigidex®P450xHP60 and supported by D1a, D2a, D3, D4, D7 to D9 and D11 was not proven "up to the hilt" as required by the case law of the EPO.
(b) The appellant's argument according to which it would not be difficult to reproduce a sample of Rigidex®P450xHP60 went against its objections of lack of sufficiency of disclosure put forward in the first instance proceedings. Besides, in the technical field of the patent, it was not possible to reproduce such a product if one neither knew the process and catalyst used to prepare it, nor the nature of the matrix and of the rubber. In that respect, those characteristics could not be deduced from the product itself.
(c) The question to be answered was if the skilled person was in a position to reproduce the commercial product per se with all its properties, not only a product exhibiting the combination of properties specified in granted claim 1. In that respect, the teaching of D6 was in particular not sufficient to ensure the reproducibility of the specific product Rigidex®P450xHP60, because, for instance, a different catalyst could be used in D6 and for the alleged public prior use.
(d) For those reasons, novelty over the alleged public prior use Rigidex®P450xHP60 was given.
Inventive step
(e) The subject-matter of granted claim 1 differed from the closest prior art constituted by example 17 of D10 in the specific ranges defined for features Mz(XCS) and Mz/Mn(XCS). In that respect, the appellant's view regarding the contribution of component Y-7 to the XCS component were contested on the basis of D12 and D13. Also, the calculations made by the appellant in respect of Mz(XCS) and Mn(XCS) were incorrect.
Comparative example CE1 differed from examples E1 and E2 of the patent in suit (illustrative of granted claim 1) in that the features Mz(XCS) and IV(XCS) were lower. It was shown in the patent in suit that those differences led to improved brittle/ductile transition temperature while maintaining good tensile and Charpy properties.
There was no hint in D10 to increase Mz(XCS) while simultaneously keeping Mz/Mn(XCS) below 15.2. Also, D6 neither provided an incentive to increase Mz(XCS) above the values disclosed in the examples of D6, nor provided a hint how to improve the brittle/ductile transition temperature.
(f) Alternatively, should D6 be considered as the closest prior art as argued by the appellant, the subject-matter of granted claim 1 differed from example 11 of D6 not only in the Mz(XCS) value but also in the specific range of intrinsic viscosity of the xylene cold soluble fraction. In that respect, the feature "Comp. B IV" disclosed in Table 1B on page 31 of D6 did not correspond to the feature IV(XCS) specified in granted claim 1, contrary to the opposition division's view, but to the intrinsic viscosity of said component B, which was defined in D6 either as the whole rubber component (page 9, lines 25-26) or the high molecular weight portion of the xylene soluble portion (page 5, lines 19-25). It was further derivable from the data provided in D6 that the matrix (component A of D6) contributed to 13.5 wt.% of the xylene cold soluble fraction: therefore, said contribution should be taken into account. Consequently, component B of D6 could not be equated with the XCS fraction according to granted claim 1.
Since D6 neither disclosed Mz(XCS) values in the range of at least 950 kg/mol according to granted claim 1, nor provided a hint how to increase Mz(XCS) so as to be in the range of at least 950 kg/mol while keeping the ratio Mz/Mn(XCS) below 15.2, the subject-matter of granted claim 1 could not be arrived at in an obvious manner. In that respect, none of the examples of D6 exhibited a Mz(XCS) of at least 950 kg/mol as required by granted claim 1. Also, since the examples of D6 showed that increasing Mz(XCS) led to decreased melt flow rate corresponding to feature MFR2 of granted claim 1, the skilled person would not be motivated to increase Mz(XCS). Besides, example 6 of D6 showed that increasing Mz(XCS) led to a ratio Mz/Mn(XCS) above 15.2. Finally, should the amount of hydrogen used during the polymerisation process be reduced so as to increase the molecular weight, as contemplated by the appellant, each of Mn(XCS), Mw(XCS) and Mz(XCS) would increase but not in the same way: therefore, it could not be predicted how the ratio Mz/Mn(XCS) would be modified.
Admittance of the late-filed document D14
(g) There was no reason justifying the filing of D14 at such a late stage of the proceedings, all the more since that document was well known to the parties since it had also been dealt with in the parallel case T 1766/14 (see section II above).
The features Mz(XCS) and Mz/Mn(XCS) according to granted claim 1 were not disclosed in D14 and the Mz(XCS) feature was not immediately recognisable from the information provided in D14.
In the parallel case T 1766/14, it had not been shown that example CE1 of D14 mandatorily satisfied the Mz(XCS) and Mz/Mn(XCS) features of claim 1 of the present patent. Besides, the same opposition division as that in charge of the present case had brought up D14 by itself in the parallel case. Should that document have anticipated the granted claims of the present patent, the opposition division would have also cited D14 in the present proceedings.
For those reasons, D14 was not prima facie highly relevant and should not be admitted to the proceedings.
XV. The appellant requested that the decision under appeal be set aside and that European patent No. 2 243 803 be revoked. The appellant further requested that documents D11, filed with the statement of grounds of appeal, and D14, filed with letter dated 12 October 2017, be admitted into the proceedings.
The respondent requested that the appeal be dismissed (main request), or, alternatively, that the patent be maintained in amended form on the basis of any of the first to the third auxiliary requests filed with the reply to the statement of grounds of appeal and that D11 and D14 to D17 be not admitted into the proceedings.
Reasons for the Decision
Main request (patent as granted)
1. Novelty
1.1 The sole novelty objection put forward in appeal by the appellant is against granted claim 1 in view of the alleged public prior use in respect of product Rigidex®P450xHP60.
1.2 Although all the concerns identified in the Board's communication (see section IX above) regarding the relationship between the documents relied upon by the appellant (sections 6.2.1, (a) to (e)) and/or the nature of the product disclosed in each of those documents (sections 6.2.2, (a) to (d)) were not removed by the appellant's arguments, it is not necessary for the Board to deal with those issues in details in view of the conclusion drawn in sections 1.3 to 1.9 below.
1.3 According to G 1/92 (see the headnote), one of the conditions for a product to belong to the state of the art is that it can be reproduced by the skilled person. In section 1.4 of the reasons it is in particular indicated that: "An essential purpose of any technical teaching is to enable the person skilled in the art to manufacture or use a given product by applying such teaching. Where such teaching results from a product put on the market, the person skilled in the art will have to rely on his general technical knowledge to gather all information enabling him to prepare the said product. Where it is possible for the skilled person to discover the composition or the internal structure of the product and to reproduce it without undue burden, then both the product and its composition or internal structure become state of the art" (emphasis by the Board).
1.4 In the Board's view, those passages of G 1/92 also imply that a product put on the market is considered not to have been made available to the public within the meaning of Article 54(2) EPC if the skilled person had no means of establishing the composition or the internal structure of the product or was not able to reproduce it, in spite of the product being publicly available before the priority/filing date of the patent.
1.5 In the present case, independently of whether a sample of Rigidex®P450xHP60 was publicly available before the filing date of the patent in suit and whether it fulfilled each of the features specified in granted claim 1, a condition to be fulfilled is therefore that the skilled person knew how to prepare said product without undue burden.
1.6 In that respect, it is generally known in the field of polymers and it was not contested by the appellant that the nature of the catalyst system, the type of reacting system and the process conditions significantly affect the properties of the produced polymer and of any product derived from it. Indeed, in the polymer field, in which products and compositions are often defined by means of parameters, the requirements of sufficiency of disclosure is analysed with particular care and is considered to be met in such cases if the application or the patent, when necessary supported by the common general knowledge, discloses the method of preparation of the polymers (in particular by means of the catalyst system, the type of reacting system and the process conditions) which results in products and compositions with the required parameters. The same criteria must therefore apply to the reproducibility without undue burden of a product on the market.
Considering that it was neither shown by the appellant that any information in that respect was available to the public before the filing date of the patent in suit for the product under scrutiny, nor that such information belonged to common general knowledge, it is concluded that the mere disposal of a sample of Rigidex®P450xHP60 was not sufficient for the skilled person to be able to prepare it.
It is further noted that in its notice of opposition (section on sufficiency of disclosure) the appellant argued that the combination of parameters defined in granted claim 1 could only be obtained using a specific catalyst system, which is in line with the above conclusion that without knowing among others which catalyst system was used for preparing Rigidex®P450xHP60, the skilled person would not be in a position to prepare said product without undue burden.
1.7 In its letter of 12 October 2017 (page 5: heading "6.3") the appellant argued that it would not have been difficult for the skilled person to prepare a composition having the features of the public prior use product which were specified in claim 1. However, this is not the issue at stake. Rather, in order for the product to be state of the art, the question is whether or not the skilled person would have been in a position to prepare the product as such, i.e. a sample identical to Rigidex®P450xHP60 in all its properties (not only those specified in claim 1, but exhibiting e.g. also the same properties as indicated in D2a). It was however not shown by the appellant that this was the case. To the contrary, the appellant stated in the above identified passage of its letter dated 12 October 2017 (see last full paragraph) that "what may be more difficult (if the catalyst used for the original product is not known) is obtaining the same mechanical properties as the Rigidex product".
1.8 During the oral proceedings before the Board the appellant argued that Rigidex®P450xHP60 was very similar to the products prepared in D6 and that the skilled person could adapt the teaching of D6 in order to prepare a composition according to granted claim 1. However, there is no evidence on file that the specific product supporting the objection of public prior use, namely Rigidex®P450xHP60, was prepared according to the teaching of D6. There is also no evidence on file that a product prepared according to D6 may show the same combination of properties as Rigidex®P450xHP60 (see e.g. D2a). Therefore, the appellant's argument does not convince.
1.9 During the oral proceedings before the Board the appellant submitted that it would not be reasonable to consider that a product falling under granted claim 1 which was in the public's hands before the filing date of the patent in suit could be held not to anticipate the subject-matter of said patent.
However, this is the conclusion reached in view of the condition which is derivable from decision G 1/92 (as explained in sections 1.3 and 1.4 above), namely that in order to be part of the prior art pursuant to Article 54(2) EPC, a public prior use must also amount to an enabling disclosure. A similar conclusion was already reached e.g. in T 977/93 (OJ EPO 2001, 84: sections 3, 4, 11 and 13 of the reasons), T 370/02 (sections 8.6 to 8.8 of the reasons), T 2045/09 (sections 29, 31 and 32-38 of the reasons) and T 23/11 (sections 2.1 to 2.5 of the reasons). The same line of argumentation was also adopted in T 301/94 (sections 3.3 to 3.5 of the reasons), albeit the conclusion in that case was that the alleged public prior use was part of the prior art because it could be reproduced without undue burden. Therefore, the appellant's argument is not persuasive.
1.10 In view of the above, it cannot be concluded that the skilled person was able to reproduce the product Rigidex®P450xHP60 without undue burden. Under those circumstances, a sample of Rigidex®P450xHP60 does not form part of the prior art pursuant to Article 54(2) EPC and cannot anticipate the subject-matter of the granted claims.
1.11 For those reasons, the appellant's sole objection pursuant to Article 54 EPC against granted claim 1 is rejected.
2. Inventive step
2.1 The sole objection of lack of inventive step put forward in appeal by the appellant is against granted claim 1.
2.2 Closest prior art
2.2.1 Whereas the appellant considered D6 as closest prior art the respondent considered D10.
2.2.2 The patent in suit aims at providing heterophasic polypropylene compositions having a low brittle/ductile transition temperature while maintaining at a high level other properties such as stiffness, impact and processability in terms of fast throughput (paragraphs 11, 15 and 114; Table 2). The compositions are used for making moulded articles, in particular by injection moulding (paragraphs 111 and 114).
2.2.3 D6 deals with heterophasic polypropylene compositions (claim 1; page 1, lines 5-7 and 18-25) having good impact resistance (page 28, line 23 to page 29, line 23; Table 8, page 39). It is indicated at page 1, lines 13-16 that such heterophasic polypropylene compositions are less brittle than polypropylene homopolymers. In the examples melt flow rates are further determined (Tables 1-6, 7B, 8).
2.2.4 D10 also deals with heterophasic polypropylene compositions which are superior in the mechanical properties and in the flowability upon injection moulding (claims; column 1, lines 11-16; column 2, lines 8-16; column 28, lines 45-56). In the examples, the brittle temperature is further determined (see e.g. Table 6, footnote 10; Tables 16-17, footnote 7).
2.2.5 Even if the problems addressed in D10 appear to be closer to those posed in the patent in suit, it may be seen from the above that both D6 and D10 are related to the same or a similar technical problem as the patent in suit. Moreover, the compositions disclosed in the two documents both come close to the composition of claim 1. On this basis, in the Board's view, there is no reason to disqualify D6 as closest prior art as compared to D10 and/or to consider that one of both documents constitutes "the" most promising springboard to the invention (see Case Law, supra, I.D.3.4.1 and 3.4.2). Therefore, in the circumstances of the present case, both documents D6 and D10 may be contemplated as suitable (i.e. promising) starting points for the assessment of the inventive step.
2.2.6 In particular example 11 of D6 and example 17 of D10 are particularly relevant.
2.3 Distinguishing feature(s)
2.3.1 Example 11 of D6 as closest prior art
It was not disputed between the parties that the subject-matter of granted claim 1 differs from the composition prepared in example 11 of D6 at least in that the feature Mz(XCS) of the xylene cold soluble fraction should be of at least 950 kg/mol, which was not the case for example 11 of D6 (see Table 6).
A point of dispute resided in the meaning of the parameter "Comp. B IV" indicated in Table 1B of D6, in particular whether or not it corresponds to the feature IV(XCS) according to granted claim 1. In that respect, the feature "Comp. B IV" of Table 1B of D6 was read by the opposition division as being identical to the feature IV(XCS) indicated in granted claim 1 (see section 4.4 on page 14 of the decision), which appears reasonable. The fact that different definitions of component B are provided in D6 does not affect the opposition division's conclusion, which was based on the fact that the only teaching of D6 regarding determination of feature "IV" was the passage at page 27, lines 25-29 of D6, from which it was derived that the feature "Comp. B IV" mentioned in Table 1B of D6 was identical to the feature IV(XCS) specified in granted claim 1. Under those circumstances, also the respondent's argument regarding the contribution of the matrix to 13.5 wt.% of the xylene soluble fraction (as developed during the oral proceedings before the Board) is not relevant. Therefore, in view of the evidence on file, the Board has no reason to deviate from the opposition division's view, with the consequence that the intrinsic viscosity feature of granted claim 1 is satisfied (example 11 of D6: see Table 1B, IV(XCS) = 2.18 dl/g).
In view of the above, the subject-matter of granted claim 1 differs from that of example 11 of D6 in that it is required that Mz(XCS) is at least 950 kg/mol (vs. 544 445 g/mol in Table 6 of D6).
2.3.2 Example 17 of D10 as closest prior art
It was disputed between the parties whether or not the composition prepared in example 17 of D10 satisfies the features Mz(XCS) and Mz/Mn(XCS).
Even if the appellant's conclusion regarding the contribution to the xylene cold soluble fraction of component Y-7 and the determination of Mw(XCS) based on the Mark-Houwink relationship (see section XIII(e), first and second subsection) were to be accepted, the reasoning of the appellant is further based on the assumptions that:
- a Mw(XCS) of 600 kDa whereby one third of the distribution has an Mw(XCS) of 1250 kDa had to result in a Mz(XCS) of at least 950 kDa;
- in a distribution in which two thirds of the molecules have a molecular weight of 270 kDa, Mn(XCS) had to be relatively close to this value.
However, no evidence, nor any argument how the appellant arrived at those conclusions were given. In particular no explanation was provided by the appellant during the oral proceedings before the Board, although those issues had been specifically identified in the Board's communication (section 7.3.3.c). Therefore, those arguments are rejected.
The respondent further argued that the Mark-Houwink parameters used by the appellant were not correct (letter of 10 March 2015: bottom of page 11) and that using more suitable constants would lead to a calculated Mw(XCS) of 422 kDa, which is lower than the value considered by the appellant to estimate the Mz(XCS) feature according to granted claim 1. Considering that said statements of the respondent were not objected to by the appellant, in particular during the oral proceedings before the Board, the Board has no reason to deviate from the respondent's view.
In view of the above, it cannot be concluded that for the heterophasic polypropylene composition of example 17 of D10, the features Mz(XCS) and Mz/Mn(XCS) are implicitly disclosed. Therefore, the subject-matter of granted claim 1 differs from that of example 17 of D10 in the specific range(s) of Mz(XCS) and Mz/Mn(XCS) defined therein.
2.4 Problem effectively solved
2.4.1 The respondent argued that the problem to be solved resided in the provision of heterophasic polypropylene compositions having reduced brittle/ductile transition temperature while maintaining good tensile and impact (Charpy) properties.
2.4.2 However, no comparison between a composition according to granted claim 1 and a composition illustrative of either example 11 of D6 or example 17 of D10 is on file.
2.4.3 In that respect, the patent in suit comprises a comparison of two examples according to granted claim 1 (Tables 1 and 2: E1 and E2) with an example not according to claim 1 (Tables 1 and 2: CE 1). The composition of CE 1 differs from that of E1 and E2 in that it was prepared using a different catalyst and different working conditions. It may be seen in Table 2 of the patent in suit that whereas examples E1 and E2 illustrate the subject-matter of granted claim 1, example CE 1 results in a composition which fulfils all but one feature of granted claim 1, namely the Mz(XCS) parameter.
It can also be seen from the properties reported in the bottom part of Table 2 on page 15 of the patent in suit that as compared to example CE 1, the compositions of examples E1 and E2 show comparable mechanical properties (tensile test, flexural test and impact-Charpy) and reduced brittle/ductile transition temperature.
However, as already indicated in the contested decision (page 13, section 4.2, third paragraph), the composition of example CE 1 differs from those of examples E1 and E2 in other features than Mz(XCS), such as IV(XCS) and Mz/Mw(XCS) which are also known to influence the brittle/ductile transition temperature (see e.g. paragraphs 18-22 of the patent in suit).
In view of the above, the comparison of examples E1, E2 and CE 1 of the patent in suit cannot demonstrate the presence of an effect which is related to the above identified feature distinguishing granted claim 1 from the closest prior art, namely an increased Mz(XCS). Therefore, the technical problem formulated by the respondent was not shown to have been effectively solved and has to be reformulated.
2.4.4 In view of examples E1 and E2 of the patent in suit, the problem effectively solved over either example 11 of D6 or example 17 of D10 is seen as to reside in the provision of further heterophasic polypropylene compositions, which exhibit good brittle/ductile transition temperature while maintaining good tensile and impact (Charpy) properties.
2.5 Obviousness
2.5.1 The question has to be answered if the skilled person, desiring to solve the identified problem, would, in view of the prior art, have modified the disclosure of the closest prior art in such a way as to arrive at the subject matter of granted claim 1.
2.5.2 D6 as closest prior art
In order to arrive at the subject-matter of granted claim 1 when starting from example 11 of D6 as closest prior art, it would be necessary to increase significantly the feature Mz(XCS) above the highest value achieved in D6 while ensuring that the other parameters defined in granted claim 1 are also satisfied. In particular, it would be required to increase Mz(XCS) up to a value of at least 950 kg/mol while ensuring that Mz/Mn(XCS) remains below 15.2. As already concluded in the contested decision (page 15: last paragraph of section 4.4), there is no indication in the prior art that this could be achieved in an obvious manner.
The passage at page 29, lines 10-12 of D6 and of D5 relied upon by the appellant are related to increased molecular weight in general and not to increased Mz(XCS). Therefore, those passages can not by themselves provide a motivation for the skilled person to increase Mz(XCS). Even if the skilled person were to increase the molecular weight (e.g. by reducing the amount of hydrogen during the polymerisation process) in order to improve the impact strength as taught in D6 (page 29, lines 10-12), as argued by the appellant, there is no evidence on file that it would be possible to achieve an Mz(XCS) of at least 950 kg/mol while ensuring that the ratio Mz/Mn(XCS) remains below 15.2 as defined in granted claim 1. In this respect, the appellant's argument according to which Mz(XCS) and Mn(XCS) varied in a similar manner, which was contested by the respondent, can only be seen as being speculative and, consequently, cannot be taken into account. To the contrary, as argued by the respondent, example 6 of Table 6 of D6 shows that with the catalyst system of D6, an increase in Mz(XCS) (as compared to example 11) may be accompanied by a decrease in Mn(XCS) such that the ratio Mz/Mn(XCS) gets higher than 15.2.
There is further no evidence on file that it would be possible at all to achieve the combination of features according to granted claim 1 using the specific catalyst system taught in D6.
Also, assuming that the skilled person were to concentrate on those features, there is no evidence on file that he would have known from other documents of the prior art and/or on the basis of common general knowledge how to achieve compositions fulfilling simultaneously all the requirements according to granted claim 1, not only in terms of Mz(XCS) and Mz/Mn(XCS) but also regarding the other features defined in granted claim 1 (IV(XCS), MFR2).
2.5.3 D10 as closest prior art
It was not shown that starting from D10, the skilled person would have had any reason to concentrate on features Mz(XCS) and Mz/Mn(XCS) according to granted claim 1, which are not mentioned in D10. Also, it was not shown that it would have been obvious to modify those features so as to obtain a composition according to claim 1 in order to solve the posed problem. In that respect, in particular if one follows the argumentation of the parties that the composition of example 17 of D10 has a too low Mz(XCS), it would be necessary to increase Mz(XCS) while ensuring that Mz/Mn(XCS) remains below 15.2. As explained above in respect of D6 (section 2.5.2), it was not shown that this could be done in an obvious manner.
Finally, similarly to D6, if the skilled person were to concentrate on those features, it was not shown that he would have known how to achieve such compositions in an obvious manner.
2.6 In view of the above, the appellant's objections based on either D6 or D10 as closest prior art are rejected.
Admittance of the late-filed document D14
3. After the communication of the Board setting out its preliminary view of the case had been received, the appellant submitted with letter of 12 October 2017 the new document D14. Considering that the filing of that document represents an amendment to a party's case pursuant to Article 13(1) RPBA, the admission to the proceedings of D14 is subject to the Board's discretion (Article 13(1) RPBA) and underlies the additional stipulations of Article 13(3) RPBA.
3.1 Regarding the late-filing, it was not contested by the appellant that that document was available to the public and could have been retrieved earlier.
The appellant did not justify why D14 was only submitted at such a late stage. Considering that the appellant argued that D14 was well known to the parties involved in the current proceedings because it was also cited in the appeal of the parallel case T 1766/14 (see section II above), there can be no excuse for not having filed said document before. The fact that the document is known by the parties and the Board from separate appeal proceedings is not a valid reason to justify its submission at such a late stage and, to the contrary, even speaks against admitting it into the proceedings.
Also, it was not shown that any surprising development of the case had occurred, which could have justified the filing of D14 in response thereto.
3.2 There is no doubt that lack of novelty does not immediately appears from the document as such, as the appellant argues why the missing features (Mz(XCS) in particular) should be implicitly disclosed and should have been provided by the respondent (who was under no obligation to do so).
3.3 The fact that in the parallel case T 1766/14 (see section II above) the document was cited in the preliminary opinion of the Board for its relevance on either sufficiency of disclosure or lack of novelty (see sections 6.1.1.b and 7.2 of the Board's communication dated 18 July 2017 in T 1766/14) also does not speak in favour of the admittance of the document. Firstly the facts in both cases are different, e.g. the missing feature is not the same (Mz/Mw in T 1766/14). Secondly also the objections related to the document are different, as in T 1766/14 D14 (referred to as D10 therein) is pertinent also to sufficiency of disclosure. This means that, should D14 be admitted to the proceedings, a new and possibly complicated issue related to sufficiency of disclosure could have had to be dealt with for the first time in appeal (the findings on sufficiency of disclosure in the decision under appeal were never disputed by the appellant in the current appeal proceedings).
3.4 In view of the above, the admission to the proceedings of D14 would raise new issues, which would require to provide sufficient time for the respondent to prepare an appropriate line of defense. This, however, runs counter to the need for procedural economy. Besides, it makes no doubt that those new issues could not reasonably be expected to be dealt with by the respondent or the Board without adjournment of the oral proceedings.
3.5 For those reasons, the Board does not admit D14 to the proceedings pursuant to Articles 13(1) and (3) RPBA. | |
Third party observations
4. The third party observations pursuant to Article 115 EPC which were filed after the communication of the Board setting out its preliminary view of the case had been received by the parties to the proceedings and about one month before the oral proceedings before the Board were held, are not considered by the Board due to their late filing. In that respect, the third party may not be accorded a more favourable treatment than would have been given to an actual party to the proceedings. Also in this case, should the third party observations be admitted, an adjournment of the oral proceedings would have been necessary, which runs counter the need of procedural economy.
5. Documents D11 and D15 to D17 are not relevant for the present decision. Therefore, there is no need for the Board to elaborate any further on their admittance, which was in dispute between the parties.
6. The respondent (patent proprietor)'s main request being allowable, it is not required to deal with the auxiliary requests.
Order
For these reasons it is decided that:
The appeal is dismissed.

This decision T 1833/14 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:R000316.20171006  The file wrapper can be found here. Photo obtained via Pixabay under CC0 license (no changes made).

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Delta Patents Patent Law -


In this opposition appeal, both the proprietor and the opponent appealed the decision of the Opposition Division to maintain the patent in amended form. Besides the main request of maintaining the patent as granted, the proprietor filed a 2nd auxiliary request corresponding to the request held allowable by the OD, although did not specifically mention in the grounds of appeal that these requests were the same. The proprietor's 1st auxiliary request was identical to his 2nd, except for the addition of a new dependent claim 5, which was added to establish identical dependency as in the underlying PCT application.
The Board did not admit the1st auxiliary request into the proceedings, since the amendment was not occasioned by the impugned decision or by a new objection raised by the opponent. Rather, the request was viewed by the Board as an attempt to tidy up the allowable claim set and thus not admissible under Art. 12(4) RPBA.
The Board further observed that for admissibility under Art. 12(4), compliance with Rule 80 EPC is not the decisive factor.
The opponent attempted to argue that the proprietor's 2nd auxiliary request was inadmissible because it was not readily apparent from the proprietor's written submissions that the request corresponded to the request allowed by the OD, in contravention of Art. 12(2) RPBA. The Board held that there is no requirement under this article to indicate in the grounds of appeal that a claim request has already been submitted in the first-instance proceedings.
The 2nd auxiliary request was found admissible and was allowed.

Summary of Facts and Submissions
I. The present appeals of the proprietor (appellant 1) and of the opponent (appellant 2) lie from the opposition division's interlocutory decision finding that European patent No. 1 807 165 in amended form and the invention to which it relates meet the requirements of the EPC.
II. The opposition division held that the ground for opposition pursuant to Article 100(c) EPC prejudiced the maintenance of the patent as granted. The patent in amended form according to auxiliary request I underlying the impugned decision was found to comply with the requirements of the EPC. In particular, the requirements of Articles 123(2) and (3), 83, 54 and 56 EPC were held to be met. The claims of this request correspond to the claims as granted, with claims 7, 8 and 13 to 15 deleted.
IV. With its notice of appeal, appellant 1 filed eight auxiliary requests.
V. Claim 1 of the main request (patent as granted) and of auxiliary requests I and II reads as follows:
"1. A method for forming a filter element having a coiled web (106) of fluted filter media (108), the method comprising, feeding the web (106) of fluted filter media (108) at a controlled linear speed, characterized in that the web of fluted filter media (108) is fed at said controlled speed onto a mandrel (112) rotated by a winding motor (118) providing a controlled driving torque to the mandrel (112), and that thereby a controlled tension on the web (106) of fluted filter media (108) is maintained as the web (106) is wound onto the mandrel (112)."
VI. The claims dependent on claim 1 of auxiliary request I at issue correspond to the claims dependent on claim 1 of auxiliary request I found allowable by the opposition division (cf. II above), except for the addition of claim 5 (corresponding to claim 6 as originally filed).
VII. Independent apparatus claim 7 of auxiliary request II corresponds to its granted counterpart and reads as follows:
VIII. The arguments of appellant 1 which are relevant to the present decision may be summarised as follows:
Appellant 1's appeal was admissible.
Article 100(c) EPC did not prejudice the maintenance of the patent as granted, in particular because the language in claim 7 was clear, such that it was irrelevant whether the cutter was fixed at a fixed location along the feed path or not.
In auxiliary request I, new claim 5 was added, which was literally based on claim 2 but referred to claim 3 in order to establish identical dependency as in the underlying PCT application.
Auxiliary request II corresponded to the request held allowable by the opposition division. Auxiliary request II complied with the requirements of Articles 123, 83, 54 and 56 EPC.
IX. The arguments of appellant 2 which are relevant to the present decision may be summarised as follows:
Appellant 1's appeal was inadmissible because appellant 1 in its statement of grounds of appeal provided arguments only with respect to the requirement of Article 123(2) EPC.
All requests infringed the requirements of Articles 123(2) and 83 EPC. In particular, the dependencies in claims 7 and 8 as granted led to added subject-matter, as did the replacement of "thereby" with "and that thereby". In the independent claims, the expressions "a controlled linear speed", "a controlled driving torque" and "a controlled tension" were unclear and led to insufficiency of disclosure. Auxiliary requests I and II should not be admitted. The set of claims found allowable by the opposition division and corresponding to present auxiliary request II infringed Article 123(3) EPC and was directed to subject-matter which was not patentable, because the subject-matter of claims 1 and 7 lacked novelty over A3, A7 or A8 or at least was obvious in view thereof. The subject-matter of independent claims 1 and 7 of auxiliary request II was obvious in particular in view of the combination of A3 and A9.
X. Requests
Appellant 1 requests that the decision under appeal be set aside and the patent maintained as granted (main request), or in the alternative, on the basis of auxiliary request I as filed with the notice of appeal, or that the appeal of appellant 2 be dismissed and the patent be maintained on the basis of auxiliary request II as found allowable by the opposition division, or on the basis of one of auxiliary requests III to VIII as filed with the notice of appeal.
Appellant 2 requests that the decision under appeal be set aside and that the patent be revoked.
Reasons for the Decision
1. Admissibility of appellant 1's appeal
1.1 According to appellant 2, appellant 1's appeal should be rejected as inadmissible because appellant 1 in its statement of grounds of appeal provided arguments only with respect to the requirement of Article 123(2) EPC but did not submit any arguments with respect to the grounds for opposition under Articles 100(a) and 100(b) EPC.
1.2 The board observes that in the present case the claims of the patent as granted (main request before the opposition division and also present main request) were held to contain added subject-matter, i.e. that the ground for opposition according to Article 100(c) EPC prejudiced the maintenance of the patent as granted (see section 2.1.6 of the reasons of the impugned decision). The impugned decision does not state that any further ground for opposition prejudiced the maintenance of the patent as granted. Auxiliary request I underlying the impugned decision was then held to comply with the requirements of the EPC (see section 6.5).
1.3 Hence to comply with the requirement of Rule 99(2) EPC it is sufficient for appellant 1 to set out in its grounds for appeal why the ground for opposition pursuant to Article 100(c) EPC did not prejudice the maintenance of the patent as granted, i.e. why in its view the patent as granted did not contain added subject-matter.
As appellant 1's grounds of appeal include an explicit statement of why it did not agree with the findings of the opposition division with respect to the claims as granted (cf. page 2, third paragraph: "This is not justified for the following reasons") and provide supporting arguments, appellant 1's appeal is sufficiently substantiated to meet the requirement of Rule 99(2) EPC.
1.4 Appellant 1's appeal is therefore admissible.
2. Main request (patent as granted) - Article 100(c) EPC
2.1 Appellant 2 objects inter alia to claims 7 and 8 because their dependencies would create added subject-matter.
2.2 It is common ground that claims 7 and 8 correspond to originally filed claims 10 and 12 which refer to claim 9 as originally filed, the latter being deleted from the claims as granted, i.e. form the claim of the main request.
Claims 7 and 8 of the main request therefore contain subject-matter going beyond the content of the application as filed.
2.3 Thus, the main request is not allowable because the ground for opposition pursuant to Article 100(c) EPC prejudices the maintenance of the patent as granted.
3. Auxiliary request I - admissibility
3.1 This request corresponds to auxiliary request I found allowable by the opposition division, except for the addition of dependent claim 5 (corresponding to claim 6 as originally filed).
3.2 It is undisputed that a request including present dependent claim 5 could have been filed in the proceedings before the opposition division. The admittance of this request into the proceedings was thus at the board's discretion (Article 12(4) RPBA).
3.3 In its grounds of appeal, appellant 1 argued only that this amendment had been carried out in order to "establish the identical dependency of the claims as existing in the PCT application". And at the oral proceedings it refrained from commenting on the admissibility of this request under Article 12(4) RPBA.
3.4 The board finds that there is no convincing reason to admit this request into the proceedings. The independent claims of this request are identical to those of the request held allowable by the opposition division, and therefore the inclusion of an additional dependent claim cannot be considered either a legitimate reaction to the impugned decision or a legitimate attempt to defend the patent in view of objections newly raised by the opponent (appellant 2) in its grounds of appeal. Rather, this request amounts to an attempt to tidy up the claim set found allowable by the opposition division.
3.5 It is consistent case law that the opposition proceedings may not be used to tidy up the patent by adding one or more dependent claims; such an addition is normally inadmissible under Rule 80 EPC (see for instance T 993/07, reasons 1.4 et seq.).
By the same token, the board considers the addition of one or more dependent claims in appeal proceedings to a claim request held allowable by the opposition division to be an attempt to tidy up the allowable claim request and thus not admissible under Article 12(4) RPBA.
3.6 For the sake of completeness, the board observes that this finding is independent of the admissibility of the amendments in question under Rule 80 EPC. In fact, as in the present case, it could be argued that the addition of dependent claim 5 along with making claim 3 dependent on claim 1 only and making claim 4 dependent on claim 3 only (instead of being dependent on "any preceding claim" as in their granted version) was occasioned by the ground for opposition set out in Article 100(c) EPC, because the dependency of claim 3 on claim 2 as granted and of claim 4 on claim 3 as granted was objected to by the opponent in its opposition brief (see item IX.1 thereof), and the features of the now added dependent claim 5 are those of granted claim 2. Put differently, with respect to the granted set of claims the inclusion of claim 5 could be considered not merely an addition of a dependent claim but the result of the redrafting of claims 3 and 4 occasioned by the ground for opposition set forth in Article 100(c) EPC. But, as stated above, for admissibility under Article 12(4) RPBA, compliance with Rule 80 EPC is not decisive.
3.7 For the above reasons, the board did not admit auxiliary request I into the proceedings.
4. Auxiliary request II - admissibility
4.1 It is uncontested that this request corresponds to the request held allowable by the opposition division. It therefore amounts to requesting the dismissal of appellant 2's appeal.
4.2 Appellant 2 objects to its admission because appellant 1 had not stated in its written submissions that this request corresponded to the one held allowable by the opposition division, nor was this readily apparent from appellant 1's written submissions. Therefore, Article 12(2) RPBA was not complied with. Moreover, this request did not overcome the objections raised by appellant 2.
4.3 The board notes that this request was filed with the notice of appeal. Therefore, the only legal basis for rejecting it as inadmissible would be Article 12(4) RPBA; but it was held by the opposition division to comply with the requirements of the EPC. It was the subject of the impugned interlocutory decision and evidently was not rejected as inadmissible by the opposition division. The proprietor did not fail to present it in the first-instance proceedings, having in fact filed it in the proceedings before the opposition division (cf. Article 12(4), first half-sentence, RPBA). The request also relates to the case under appeal and meets the requirements of Article 12(2) RPBA (cf. Article 12(4), second half-sentence, RPBA).
4.4 The requirements of Article 12(2) RPBA do not include the necessity to indicate in the grounds of appeal or in the reply thereto whether claim requests submitted in appeal proceedings have already been submitted in the first-instance proceedings. The board therefore fails to see why auxiliary request II could be held inadmissible solely on the basis of this provision.
Moreover, the board also holds that Article 12(2) RPBA is complied with because, by re-filing the request held allowable by the opposition division, appellant clearly and concisely requests (as an auxiliary request) in its notice of appeal that the impugned decision be upheld, i.e. that the appeal of appellant 2 be dismissed. That the opposing party, i.e. appellant 2, is allegedly unable to determine whether present auxiliary request II corresponds to the request held allowable by the opposition division is of no relevance because, on an objective basis, a comparison of the two claim requests reveals that they are identical. This is also confirmed by the fact that the board had no difficulty in identifying auxiliary request II as corresponding to the request held allowable by the opposition division (cf. the board's communication pursuant to Article 15(1) RPBA, point 6.1).
4.5 The question of whether this request fails to comply with the substantive requirements of the EPC, as submitted by appellant 2, is immaterial for the issue of its admittance.
4.6 For the above reasons, the board saw no reason not to admit auxiliary request II.
5. Auxiliary request II - amendments - Article 123(2) EPC
5.1 According to appellant 2, the amendment of the expression "to thereby maintain" in claim 1 to "and that thereby ... is maintained" infringed the requirement of Article 123(2) EPC because claim 1 now lacked a link between the mandrel and the functional description originally disclosed in claim 1 as filed.
The board fails to see the alleged lack of link between mandrel and functional description. The expression "and that thereby ... is maintained" clearly entails adapting the (structural) features preceding the expression to result in the functional features following the expression. The board therefore fails to see why the aforementioned two expressions should not be considered equivalent or synonymous.
5.3 For the above reasons, the requirement of Article 123(2) EPC is met.
6. Auxiliary request II - amendments - Article 123(3) EPC
6.1 Appellant 2 also submits that for the reasons set out in point 5.2 above, the requirement of Article 123(3) EPC was infringed because the claims now also extended to embodiments in which "inadequate" control is achieved.
6.2 Again, the board fails to see why the deletion in question should lead to an extension of protection. Neither present independent claims 1 and 7 nor granted independent claims 1 and 9 require "adequate control of the tension in the media during winding". So, even in the hypothetical case that present claims 1 and 9 were construed, as submitted by appellant 2, as also covering embodiments where only "inadequate" control of the tension in the media during winding is achieved, such embodiments are also covered by the claims as granted.
6.3 For the above reasons, Article 123(3) EPC is complied with.
[Appellant 2's objections re sufficiency, novelty and inventive step were also were reviewed by the Board, which upheld the opinion of the Opposition Division that the claims in amended form meet the requirements of Articles 83, 54 and 56.]
8. Conclusion
Since the main request is not allowable and auxiliary request I is not admitted, and since auxiliary request II, which corresponds to the request held allowable in the impugned decision, is allowable, both appeals are to be dismissed.
Order
For these reasons it is decided that:
Both appeals are dismissed.
This decision T 1719/13 (pdf) has European Case Law Identifier:ECLI:EP:BA:2017:T171913.20171114. The file wrapper can be found here. Photo "Dirt" by OpenClipart-Vectors was obtained via Pixabay under CC0 license (no changes made).


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