Delta Patents

T 2406/16 - Reestablishment when appeal fee not paid

Delta Patents Patent Law -


It's another one of those nightmare scenario's. A notice of opposition is filed but the appeal fee is not paid. 
The attorney signed a notice of opposition and instructed his assistant to file the notice and pay the fee as soon as the deposit account contains enough funds. The latter requires checking with the CFO that there are enough funds in the deposit account, and can take a few days. Unfortunately, the assistent accidentally removed the due date from the system when the notice is filed. This  should not have been done until the payment was made. The board did not view this as an isolated mistake and refused the reinstate the case. 

Reasons for the Decision
(...)
Hence, the request for re-establishment of rights is admissible.
3. The appellant has, however, not shown that all due care required by the circumstances was taken to comply with the time limit for filing the appeal fee (Article 122(1) EPC).
3.1 In the case at hand, the appellant submits that the failure to comply with the missed time limit resulted from the decision to send the notice of appeal before payment of the appeal fee and the erroneous simultaneous removal of the time limit from the docketing system by an assistant, which went unnoticed by the representative.
3.2 In the case of non-observance of a time limit due to an error, the boards of appeal have established the criterion that due care is considered to have been taken if non-compliance with the time limit resulted either from exceptional circumstances or from an isolated mistake within a normally satisfactory monitoring system (Case Law of the Boards of Appeal (hereinafter "CLBA"), 8th ed., III.E.5.2., penultimate paragraph). It is the appellant's contention that the present case amounts to such an isolated mistake.
3.3 The party requesting re-establishment of rights bears the burden of making the case and proving that the requirements are met (CLBA supra, III.E.5.2., last paragraph). Thus, in the present case the appellant bears the burden of proof to show the existence of a normally satisfactory monitoring system.
3.4 The Board observes that eOLF in combination with a docketing system for monitoring the relevant time limits, when used as intended by an experienced and well trained assistant such as Ms EN under the supervision of a carefully acting representative such as Mr FC, could under most circumstances provide a satisfactory monitoring system to deal with time limits such as the one for filing a notice of appeal. However, the system described is imperfect insofar as it does not guarantee sufficient supervision under all circumstances, in particular not in cases where the usual order of processing steps is intentionally or accidentally changed or interrupted, as will be described below.
3.5 In the present case, the monitoring system was overridden before the error occurred (see 3.5.1) and the way information was exchanged between the patent department and the accounts department (see 3.5.2) made the system error-prone to begin with.
3.5.1 The normal routine of having everything necessary to file an appeal prepared by the assistant and having the representative perform a cross-check when electronically signing the notice of appeal was not followed in the case at hand. Instead the representative signed a notice of appeal containing the (then) inaccurate statement "the decision is hereby appealed and the prescribed fee paid" (italics added by the board) and left it to the assistant to pay the fee later once the CFO had informed her that there were sufficient funds in the deposit account. Whereas the normal routine made sure that the representative, who is the only one allowed to sign submissions, would certainly perform the cross-check, the deviation therefrom meant that the assistant could single-handedly make the payment and remove the time limit from the docketing system (see appellant's letter of 8 September 2017, page 2, third paragraph), so a cross-check was missing. This, however, allowed the assistant's error to remain unnoticed by the representative, who did no longer need to be involved with the matter.
3.5.2 According to the appellant's submissions, it is the patent department's task to pay fees from the company's account with the EPO by giving an order in eOLF. Yet patent attorneys and their assistants apparently do not have access to the account balance. Thus, they cannot check themselves whether there are sufficient funds to make the payment, and need to get information from the accounts department before they can issue a payment order. However, according to the Appellant's submissions, it appears to be rather difficult to get this information. It is not sufficient to contact a colleague from the accounts department because the account balance is reviewed only once or twice a week (cf. letter of 10 February 2017, paragraph bridging pages 2 and 3). Thus, even when there are sufficient funds in the account, as was the case on 1 September 2016, it might well happen, as in the present case, that members of the accounts department are not in a position to give the green light for payments because the account balance has not been checked recently enough. Since they do not normally perform checks on demand (cf. letter of 8 September 2017, paragraph bridging pages 1 and 2), the only way to get the information needed is apparently to contact the accounts department repeatedly until the point in time where the account's balance has just been checked and the department is, thus, able to provide the required information. It is evident that such a system is unreliable and prone to error.
3.5.3 Thus, changing the normal routine of checking whether the appeal fee has been paid when the notice of appeal is being sent and leaving it, instead, to the assistant to pay the appeal fee as soon as she received information from the accounts department regarding the required funds, meant intentionally deviating from a potentially satisfactory system to a system that was subject to uncertainties. These became apparent after Ms EN had erroneously removed the due date in the docketing system. Ms JS forgot to get back to Ms EN and Ms EN forgot to make further attempts to get the required information from the accounts department. Moreover, the need to deviate from the common routine only arose as a consequence of the defective information system. In a system where patent assistants have immediate access to the account balance, be it electronically or by some other reliable way of getting the latest information from the accounts department, Mr FC would not have had to deviate from the normal routine and entrust Ms EN with paying the appeal fee later, or, if he had nevertheless done so, it would not have been a problem for Ms EN to perform this task any time after having been entrusted with it.
3.5.4 Therefore, the case at hand cannot be compared with the case underlying decision T 1355/09 where an order in writing to pay the appeal fee was not carried out. In that case it was the task of the accounting department of the Appellant's parent company to effect all payments ordered by the Appellant, a small patent exploitation agency that employed only four persons. The Board found that the Appellant had no influence over the further execution of its orders, which were sent by internal post to the relevant department of its parent company and had been reliably carried out over the last years. The Board found that the risk of errors in this context was relatively low and came to the conclusion that no additional control mechanism had to be in place as had been found previously in decision T 836/09 regarding the checking of outgoing mail.
In the case at hand, on the contrary, it was the task of the patent department, i.e. the representative and his assistant, to effect the payment. Thus, the patent department had not yet done everything within its competence to file the appeal in time. Taking into account the difficulties of getting prompt information regarding the sufficiency of funds in the account (cf. sections 3.5.2. and 3.5.3 above), one can also not describe the procedure for paying fees as being low risk. Thus, the reasoning in decision T 1355/09 (reasons 1.4 - 1.7) does not apply here.
3.6 Thus, looking at the way the case was handled, the Board does not deem the monitoring system used by the Appellant to have been normally satisfactory.
3.7 Furthermore, the ultimate responsibility in observing time limits lies with the representative (see CLBA, III. E.5.5.2 e)). In the present case, he signed the letter of 1 September that contained a wrong statement regarding the payment of the appeal fee. He should have made sure that such payment had really been made. When transferring complete responsibility for this payment to his assistant - contrary to the routine procedure - he should have ensured that he performed the final cross-check himself. By jeopardising the possibility of a final cross-check, the principle of "due care" was violated.
3.8 To conclude, the omission in paying the appeal fee and the deletion from the docketing system of the time limit for paying such a fee was due to an apparently unsatisfactory monitoring system and lack of due care from the representative.
3.9 For these reasons, the request for re-establishment of rights is to be refused.
(...)
This decision T 2406/16 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:T240616.20170921. The file wrapper can be found here. Photo by Stefan Keller (kellepics) obtained via PixaBay under CC0 Creative Commons.

T 2002/13 - Extension of subject matter

Delta Patents Patent Law -


In this opposition appeal, the proprietor intended to limit the claim 1 as granted as follows:


A method to detect the presence or absence of an MREJ type xi methicillin-resistant Staphylococcus aureus (MRSA) strain characterised as having within the right extremity of SCCmec the sequence of SEQ ID NOs 17, 18 or 19 the SEQ ID NO 17 comprising:
generation of SCCmec right extremity junction sequence data by
contacting a sample to be analyzed for the presence or absence of said MRSA strain, said MRSA strain including a Staphylococcal cassette chromosome mec (SSCCmec) element containing a mecAgene inserted into chromosomal DNA, thereby generating a polymorphic right extremity junction (MREJ) type xi sequence that comprises sequences from both the SCCmec element right extremity and chromosomal DNA adjoining said right extremity, with a first primer and a second primer, wherein said first and second primers are at least 10 nucleotides in length, and wherein said first primer hybridizes with said SCCmecelement right extremity of an MREJ type xi sequence selected from the group consisting of SEQ ID NOs: 17, 18 and 19 and complements thereof, and wherein said second primer hybridizes with a chromosomal sequence of S. aureus  and wherein each of said first and second primer hybridizes with said sequence of SEQ ID NO: 17 or complements thereof  to specifically generate an amplicon if such MRSA strain is present in said sample; and
detecting the presence or absence of said amplicon.

At first glance these amendments limit the claim. In particular, the board acknowledges that the definition of the second primer is narrower than its definition as granted. Nevertheless, the combination of features amount to extension of the conferred protection.



Reasons for the Decision
(...)
Auxiliary request 3
Article 123(3) EPC
The feature "wherein each of said first and second primer hybridizes with said sequence of SEQ ID NO: 17 of complements thereof"
23. In the decision under appeal (cf. page 6, first paragraph), the opposition division found that the feature "wherein each of said first and second primer hybridizes with said sequence of SEQ ID NO: 17 of complements thereof" did not extend the scope of protection as compared to the granted claims. The board does not agree with the opposition division on this issue.
24. Claim 1 as granted defines a first primer hybridizing "with said SSCmec element right extremity of an MREJ type xi sequence selected from the group consisting of SEQ ID NOs: 17 [...] and complements thereof" and a second primer that "hybridizes with a chromosomal sequence of S. aureus to specifically generate an amplicon if such MRSA strain is present in said sample" (cf. point I supra). The sequence of both the first and second primer may be located closely or immediately adjacent to the SCCmec insertion site defining the MREJ type xi of sequence of SEQ ID NO: 17 but, whilst the first primer must necessarily hybridize with a sequence within the SCCmec element right extremity of said MREJ type xi, the second primer may hybridize with any S. aureus chromosomal sequence, not necessarily within the MREJ type xi of sequence of SEQ ID NO: 17. All possible combinations of first and second primers fulfilling these conditions form the population of primer pairs that can be used in the method according to claim 1 as granted.
25. Amended claim 1 of auxiliary request 3 defines the first and second primers by the feature that "each of said first and second primer hybridizes with said sequence of SEQ ID NO: 17", and further requires that they "specifically generate an amplicon if such MRSA strain is present in said sample" (cf. point XII supra). Thus, even though the first primer is not explicitly required to hybridize with the SCCmec element right extremity of the MREJ type xi of sequence of SEQ ID NO: 17, a detection of the MRSA strain in the sample implicitly requires that at least one of the primers, if not both of them, must necessarily hybridize with sequences located within the polymorphic right extremity of the SCCmec because it is this specific polymorphic sequence which characterizes the MREJ type xi MRSA strain and allows its detection (cf. paragraphs [0007], [0012] and [0034], and claim 1 of the patent application).
26. The second primer in the method of claim 1 of auxiliary request 3 does not hybridize with any chromosomal sequence of S. aureus - as in claim 1 as granted, but only with the MREJ type xi sequence of SEQ ID NO: 17. Although this definition of the second primer is narrower than the definition of the second primer found in claim 1 as granted, the second primer as defined in claim 1 of auxiliary request 3 may now hybridize not only with the orfX sequence closely or immediately adjacent to the SCCmec insertion site defining the MREJ type xi sequence of SEQ ID NO: 17, but it may also hybridize with the insertion site itself, as well as with the SCCmec right extremity as far as this second primer, together with an appropriate first primer, specifically generate an amplicon if an MREJ type xi MRSA strain is present in the sample. A method using such combinations of first and second primers does not fall within the scope of granted claim 1. Since in the amended claim 1 the protection conferred by claim 1 as granted has been extended, the amendment is not allowable under Article 123(3) EPC.
27. Thus, the appellant's request to maintain the patent on the basis of claims 1 and 2 according to auxiliary request 3 fails.
(...)
This decision T 2002/13 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:T200213.20170517. The file wrapper can be found here. Photo by Skeeze obtained via PixaBay under CC0 Creative Commons.

T 514/14 - Respondent could have reacted to the raised objections well in advance to the oral proceedings

Delta Patents Patent Law -


In this opposition appeal, the parties were summoned to oral proceedings. In a communication issued in preparation therefor, the Board drew the parties' attention to some issues likely to be addressed at the oral proceedings. The Board inter alia expressed concerns regarding the clarity of claim 1 held allowable by the Opposition Division and pointed out that compliance with Article 84 EPC might also become an issue with regard to the auxiliary requests. Concerning the issue of compliance with Article 123(3) EPC, the Board drew the parties' attention to a specofic paragraph of the Case Law Book. The Respondent/proprietor commented on the points addressed in the Board's communication, and defended inter alia its position submitting that the amended claims of all the already pending requests were clear (Article 84 EPC) and complied with Article 123(3) EPC. It nevertheless filed three additional sets of amended claims as auxiliary requests 4 to 7. Oral proceedings before the Board were held. The debate focused on the compliance of the pending claims with Articles 84 EPC and 123(3) EPC. During the oral proceedings, the Respondent filed a further amended set of claims as auxiliary request 1bis, to be intercalated between auxiliary requests 1 and 2. The Appellant/opponent asked not to admit auxiliary request 1bis due to its late-filing. 

Summary of Facts and Submissions
I. The appeal by the Opponent lies from the interlocutory decision of the Opposition Division to maintain the European patent EP 1 629 075 in amended form on the basis of the then pending first auxiliary request.

II. Independent claim 1 according to said first auxiliary request held allowable by the Opposition Division reads as follows (amendments to claim 1 as granted made apparent by the Board, additions in bold):

"1. A bathroom cleaning composition which comprises by weight:
(a) 0.1 % t 10% of a chlorine bleach compound;
(b) 0.1 % to 3% of an alkali metal silicate;
(c) 0.25% to 5% of a phosphate builder salt which is sodium tripolyphosphate; and
(d) the balance being water,
wherein the bathroom cleaning composition further includes
(e) an amine oxide surfactant,
and has a pH of at least 9 to 14."

III. In the decision under appeal, the Opposition Division came to the conclusion that the patent as amended according to said first auxiliary request met the requirements of the EPC, in particular those of Article 123(3) EPC.

IV. In its statement of grounds, the Appellant (Opponent) invoked inter alia non-compliance of the claims allowed by the Opposition Division with Article 123(3) EPC.

V. In its reply, the Respondent (Patent Proprietor) rebutted the Appellant's objections but nevertheless filed three sets of amended claims as auxiliary requests 1 to 3.

VI. The parties were summoned to oral proceedings. In a communication issued in preparation therefor, the Board drew the parties' attention to some issues likely to be addressed at the oral proceedings. The Board inter alia expressed concerns regarding the clarity of claim 1 held allowable by the Opposition Division (point 3.2.3 of the communication) and pointed out that compliance with Article 84 EPC might also become an issue with regard to the auxiliary requests (point 5 of the communication). Concerning the issue of compliance with Article 123(3) EPC, the Board drew the parties' attention to the "Case Law of the Boards of Appeal of the EPO", 8th edition, 2016, section II.E.2.4.13" (point 3.2.1 of the communication).

VII. Under cover of a further letter of 2 June 2017, the Appellant filed a further item of evidence (D4) supposed to illustrate common general knowledge. It submitted inter alia that claim 1 of the main request (claim 1 in the version held allowable by the Opposition Division) was either objectionable under Article 123(3) or lacked clarity (Article 84 EPC), and extended its Article 123(3) EPC objection to the respective claims 1 of auxiliary requests 1 to 3.

VIII. With letter of 21 June 2017, the Respondent also commented on the points addressed in the Board's communication, submitting inter alia that the amended claims of all the already pending requests were clear (Article 84 EPC) and complied with Article 123(3) EPC. It nevertheless filed three additional sets of amended claims as auxiliary requests 4 to 7

IX. Oral proceedings before the Board were held on 21 July 2017. The debate focused on the compliance of the pending claims with Articles 84 EPC and 123(3) EPC. During the oral proceedings, the Respondent filed a further amended set of claims as auxiliary request 1bis, to be intercalated between auxiliary requests 1 and 2. The Appellant asked not to admit auxiliary request 1bis due to its late-filing.

Amended claim 1 of auxiliary request 1bis differs from claim 1 as granted in that it reads as follows (amendments made apparent by the Board, additions in bold):

"1. A bathroom cleaning composition which comprises

(c) 0.25% to 5% of a phosphate builder salt; and

and has a pH of at least 9 to 14,

and in which the composition comprises 0.25% to 5% of a phosphate builder salt which is sodium tripolyphosphate".

X. Final requests

The Appellant requested that the decision under appeal be set aside and the patent be revoked.

The Respondent requested as its main request that the appeal be dismissed or if that is not possible that the patent be maintained on the basis of the claims according to one of the following auxiliary requests, to be taken in their numerical order:

- auxiliary request 1, filed with letter of 4 September 2014,
- auxiliary requests 1bis, filed at the oral proceedings of 21 July 2017,
- auxiliary requests 2 to 3, filed with letter of 4 September 2014,
- auxiliary requests 4 to 7, filed with letter of 21 June 2017.

XI. The Appellant's objections and arguments of relevance for the present decision can be summarised as follows.

- The formulation of feature (c) in claim 1 of the main request either amounted to an extension of the scope of protection, compared to that of granted claim 1, thus contravening Article 123(3) EPC, or had to be regarded as unclear, thus contravening Article 84 EPC.

- The same applied to the formulation of feature (c) in the respective claims 1 of auxiliary requests 1 and 2 to 7.

- Auxiliary request 1bis was filed too late and should therefore not be admitted into the proceedings, taking into account that an objection under Article 123(3) EPC had already been raised in the notice of opposition and in the statement of grounds of appeal. Such an objection was also raised with respect to auxiliary requests 1 to 3, in the Appellant's response to the Board's communication. The latter also addressed a corresponding clarity issue with respect to claim 1 of the main request. The Patent Proprietor thus had ample opportunity to react by filing an auxiliary request overcoming these deficiencies at an earlier point in time, i.e. before the day of the oral proceedings.

XII. The Respondent essentially counter-argued as follows.

- Feature (c) of claim 1 according to the main request made it clear that the claimed composition was limited to compositions comprising a total amount of 0.25% to 5% of any or all phosphate builder salts, as was claim 1 as granted, but additionally required that all of the 0.25% to 5% phosphate builder salt present had to be in the form of sodium tripolyphosphate.

- The wording of feature (c) of claim 1 of the first auxiliary request expressed the same limitation even more explicitly.

- Auxiliary request 1bis should be admitted into the proceedings because it was filed in reaction to the Board's objection under Article 84 EPC against the first auxiliary request, raised for the first time during oral proceedings.

- Since claim 1 of auxiliary request 1bis was formulated according to the wording "en cascade" considered allowable in decision T 999/10, it was not objectionable under Article 84 or Article 123(3) EPC.

Reasons for the Decision

Main request - Lack of clarity

1. Compared to claim 1 as granted, claim 1 of the main request is amended by incorporating a feature taken from the description. Claim 1 is therefore, open to clarity objections arising from this amendment (decision G 3/14, OJ 2015, 102, Order).

2. Article 84 EPC stipulates that the claims shall be clear and define the matter for which protection is sought. Those requirements serve the purpose of ensuring that it is possible to assess whether or not a given subject-matter falls within the ambit of a particular claim.

Article 123(3) EPC stipulates that a European patent may not be amended in such a way as to extend the protection it confers.

Amendments made to a granted claim should thus not lead to an ambiguity (lack of clarity) in wording, let alone if they pave the way for a technically sensible interpretation of the so-amended claim, which, if adopted, makes the claim objectionable on the ground that it extends the scope of protection conferred by the claim as granted.

3. The Respondent submitted that feature (c) of claim 1 according to the main request (wording under II, supra) imposed two conditions on the claimed composition, namely:

- that the total relative amount of any or all phosphate builder salts present had to be within the range from 0.25% to 5% (as according to claim 1 as granted),

and, additionally,

- that all of the phosphate builder salt present was in the form of sodium tripolyphosphate.

Since amended claim 1 comprised an additional limitation, the scope of protection conferred by this claim was clearly restricted in comparison to claim 1 as granted.

4. The Board does not accept this argument for the following reasons.

4.1 Within the context of amended claim 1 at issue feature (c) does not expressly exclude the presence of phosphate builder salts other than sodium tripolyphosphate in the claimed composition. Considering the open definition ("comprising") of the claimed composition, another technically sensible interpretation is that according to feature (c), the claimed composition comprises 0.25% to 5% of sodium tripolyphosphate, but that other phosphate builder salts may also be present in the composition, in undefined amounts.

4.2 Claim 1 construed in this alternative manner also encompasses compositions not encompassed by claim 1 as granted, i.e. compositions comprising phosphate builder salts in a total relative amount of more than 5%, thereby extending the scope of protection conferred by the latter claim, contrary to the requirements of Article 123(3) EPC.

4.3 In the Board's judgement, claim 1 lacks clarity (Article 84 EPC) due to the ambiguity of its wording, generated by the amendment made and allowing for two substantially different interpretations of the claim and its scope of protection.

5. The Appellant's main request is, therefore, not allowable.

First auxiliary request - Lack of clarity

6. Feature (c) of claim 1 according to the first auxiliary request reads as follows (amendments to claim 1 as granted made apparent by the Board):

"(c) 0.25% to 5% of a phosphate builder salt, wherein the phosphate builder salt is sodium tripolyphosphate"

7. According to the Patent Proprietor, the presence of the comma after the term "salt", together with the inserted term "wherein", expressed said "double condition" (point 3, supra) imposed on the claimed composition in an even clearer way.

8. This argument does not, however, convince the Board.

8.1 At the oral proceedings, asked by the Board, the Patent Proprietor could not indicate without hesitation what the term "wherein" actually was supposed to refer to, i.e. to the phosphate builder salt or to the whole composition.

8.2 Accordingly, the amended feature (c) of claim 1 at issue can also be interpreted in the sense that the condition regarding the relative amount ("0.25% to 5%") only applies to the sodium tripolyphosphate present in the composition.

8.3 As in the case of claim 1 of the main request, this would imply that other phosphate builder salts may be comprised in the composition in amounts bringing the total relative amount of phosphate builder salts to a value beyond 5%, i.e. outside the range of 0.25% to 5% prescribed by claim 1 as granted for the totality of phosphate builder salts present (points 4.1 and 4.2, supra).

8.4 This conclusion is also in line with the Case law of the Boards of appeal, see e.g. the rationale of decision T 287/11 (01.04.2014), in which claim 1 as granted was directed to a composition comprising inter alia "from from 5% to 90% by weight of a water-soluble polyalkylene glycol" from a class defined in a relatively generic manner. Claim 1 as amended post-grant comprised the additional wording "wherein the water-soluble polyalkylene glycol conforms to the formula ...", the formula defining a more specific sub-group of compounds. The entrusted Board found that this amendment resulted in an extension of the protection conferred (Reasons, 2.4 to 2.6), but that a claim comprising an additional, express indication as to the total amount of compounds falling under the generic definition of the polyalkylene glycol component was allowable under Article 123(3) EPC.

8.5 The ambiguity in the wording of claim 1, feature (c) is thus not resolved by the slightly different wording proposed according to the first auxiliary request.

9. Claim 1 of the first auxiliary request is thus likewise objectionable for lack of clarity (Article 84 EPC). The first auxiliary request is therefore not allowable.

Auxiliary requests 2 to 7 - Lack of clarity

10. Claim 1 of auxiliary request 4 includes the same formulation of feature (c) as claim 1 of the main request. In the respective claims 1 of auxiliary requests 2, 3 and 5 to 7 feature (c) is worded as in claim 1 of the first auxiliary request.

10.1 As conceded by the Respondent at the oral proceedings, the conclusion reached by the Board as regards the lack of clarity (Article 84 EPC) of claim 1 of the main request and of claim 1 of auxiliary request 1 applies likewise to claim 1 of auxiliary request 4 and to claim 1 of each of auxiliary requests 2, 3 and 5-7, respectively (Article 84 EPC).

10.2 These requests are thus not allowable either.

Auxiliary request 1bis - Not admitted into the proceedings

11. Auxiliary request 1bis was submitted for the first time in the course of the oral proceedings before the Board.

11.1 According to the Respondent, the late filing of this request was justified considering that the Board's concerns regarding the clarity of feature (c) in claim 1 of auxiliary request 1 only materialised during the oral proceedings. The objections under Article 84 EPC raised by the Appellant in its letter dated 2 June 2017 were vague and unsubstantiated. The Patent Proprietor should thus be given a fair chance to react to the pending clarity objection.

Moreover, claim 1 of this new request was clearly allowable since it was formulated in accordance with the rationale of decision T 999/10 (19.06.2012), where a similarly amended wording had been considered allowable by the Board.

11.2 The Board does not accept this argumentation for the following reasons.

11.2.1 In point 5 of its communication the Board had indicated that the Patent Proprietor had to be prepared to comment on the compliance of the auxiliary requests with the requirements of inter alia Articles 84 and 123(3) EPC at the oral proceedings, giving consideration to the comments made in said communication. More particularly, under point 3.2 of the communication, the Board had drawn the attention of the parties to the publication "Case Law of the Boards of Appeal of the EPO", 8th edition, 2016, section II.E.2.4.13, as to the way in which wording as used in claim 1 of the main request, feature (c), had previously been assessed by the Boards of Appeal. The quoted section explicitly refers to several decisions, including decision T 287/11 referred to above.

Hence, already in its communication, the Board had indicated to the Patent Proprietor that the compliance of auxiliary request 1 with the requirements of both Articles 84 and 123(3) EPC might come under scrutiny at the oral proceedings.

Moreover, as already noted above, an objection to the wording of feature (c) of claim 1 of auxiliary request 1 was expressly raised by the Appellant in its letter of 2 June 2017 (point 4.2), i.e. well in advance of the oral proceedings, even if formulated in rather brief terms.

Since in inter partes appeal proceedings parties usually have divergent opinions regarding at least some of the issues decided by the Opposition Division, each party must envisage the possibility that the Board may overturn the decision of the Opposition Division and/or adopt the view of the adverse party.

In the written procedure, in reply to the objections raised by the Appellant and the communication of the Board, the Respondent had, however, chosen to defend its position without making any amendment to feature (c) of claim 1 according to auxiliary request 1. Only after the debate during oral proceedings did it decided to file a further auxiliary request supposed to address the clarity issue.

11.2.2 The Respondent also submitted that claim 1 of auxiliary request 1bis clearly overcame the pending clarity objection, since it was formulated in accordance with decision T 999/10.

In the case underlying this decision, granted claim 1 was directed to an adhesive, comprising inter alia "un mélange: de 15 à 55% en poids d'au moins une résine tackifiante compatible". The claim was then amended by appending to said claim the sentence (emphasis added by the Board) "et dans lequel (mélange) la résine tackifiante est une résine...".

The Board entrusted with the case considered (Reasons, 3.3-3.7) that this wording "en cascade" clearly imposed a double condition on the claimed "mélange", and that therefore the scope of protection conferred by this claim was more limited by virtue of the amendment made.

However, claim 1 of auxiliary request 1bis as filed by the Respondent is not worded in a comparable manner since it reads (amendments with respect to granted claim 1 made apparent by the Board, additions in bold) as follows:

"1. A bathroom cleaning composition which comprises by weight:
(a) 0.1 % to 10% of a chlorine bleach compound;
(b) 0.1 % to 3% of an alkali metal silicate;
(c) 0.25% to 5% of a phosphate builder salt; and
(d) the balance being water,
wherein the bathroom cleaning composition further includes
(e) an amine oxide surfactant,
and has a pH of at least 9 to 14,
and in which the composition comprises 0.25% to 5% of a phosphate builder salt which is sodium tripolyphosphate".

The Board holds that this formulation is also prima facie ambiguous and, hence, unclear (Article 84 EPC) because it is not apparent to what the expression "in which" and, hence, the entire following relative clause refers to, i.e. to the whole "cleaning composition", or to one or more of the listed components.

This formulation is still open to an interpretation according to which the composition comprises

- according to feature (c), at least one first phosphate builder salt in a relative amount within the stated range,

and, additionally,

- according to the last feature of the claim, sodium tripolyphosphate (as further, different phosphate builder salt) in a relative amount within the stated range.

Such different phosphate builder salts could thus be present in a combined (total) amount exceeding the upper limit of 5% prescribed by claim 1 as granted as regards the amount of (all) phosphate builder salt(s) present in the composition. According to this interpretation, claim 1 at issue thus confers a protection which is extended compared to the one conferred by claim 1 as granted.

The wording of claim 1 at issue is thus prima facie unsuitable for overcoming the pending objection under Article 84 EPC and, thus, not clearly allowable.

For the sake of completeness, the Board observes that also in decision T 1360/11 (11.11.2014), briefly referred to by the Respondent during the oral proceedings, a double condition (expressed differently than in the case underlying T 999/10 mentioned above) was held to be necessary to ascertain that an amendment narrowing down a generic class or list of chemical compounds did not lead to an extension of the protection conferred (Reasons, 3.1-3.9).

11.3 Taking into consideration all aspects addressed above, the Board concludes that the Respondent could have reacted to the raised objections under Article 84 and 123(3) EPC by filing a further auxiliary claim request well in advance of the oral proceedings. Auxiliary request 1bis was, however, only filed during the oral proceedings, i.e. in the latest stage of the proceedings. Due to the new wording added to claim 1, requiring further considerations as to its possible implications having regard to the requirements of Article 84 and/or Article 123(3) EPC, the complexity of the case would have been increased.

11.4 Therefore the Board decided, in the exercise of its discretion under Articles 12(4) and 13(1) and (3) RPBA, not to admit late-filed auxiliary request 1bis into the proceedings.

Conclusion

12. None of the Respondent's requests is both admissible into the proceedings and allowable.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked

This decision T 514/14 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:T051414.20170721  . The file wrapper can be found here. Photo "Bunker" by Alex Gilbert obtained via Flickr under CC BY 2.0 license (no changes made).

T 1889/13 - Right to non-overlapping boards?

Delta Patents Patent Law -


In this opposition appeal, the appellant requested that the members of the board who were involved in decision T 1676/11 relating to a divisional application of the opposed patent be excluded from taking part in the present appeal proceedings for suspected partiality under Article 24(3) EPC.

The arguments of the appellant can be summarised as follows:

  • The critical issues of the present appeal were in essence the same as the critical issues in the previous appeal proceedings T 1676/11 concerning the divisional application. 
  • The board members having decided the appeal for the divisional application would have difficulty in re-examining and deciding the present case without having a preconceived or anticipatory judgment or without giving rise to suspicion of such preconceived or anticipatory judgment.

Reasons for the Decision
1. Scope of the interlocutory decision

The present decision was taken by the alternate board composition established under Article 24(4) EPC in order to decide on an objection of suspected partiality raised under Article 24(3) EPC (see above points II, VI). In accordance with the procedure described in decision T 1028/96, the board in its original composition decided in its interlocutory decision of 20 May 2015 that the objection was admissible (see above point V). Said interlocutory decision is binding on the present (alternate) board. The scope of the present decision is therefore limited to the allowability of the objection of suspected partiality.

2. Allowability of the objection

2.1 Legal basis of the objection

2.1.1 The appellant has not argued that there was any reason for exclusion under Article 24(1) EPC, nor does the present board see any basis for the application of Article 24(1) EPC either. The appellant raised an objection for suspected partiality under Article 24(3) EPC only. Under Articles 24(3) and 24(4) EPC, the deciding board should apply a twofold test, namely:

- Firstly a "subjective" test "in concreto" requiring evidence of actual partiality of the member or members concerned;

- Secondly an "objective" test "in abstracto" to determine if the circumstances of a case would allow a reasonably objective and informed person to conclude that he or she might have good reason to suspect the partiality of the member concerned.

(see G 2/08, interlocutory decision of 15 June 2009, not published in OJ EPO, Reasons point 4)

2.1.2 As far as the "subjective" test is concerned, the appellant has not alleged that there was actual partiality and the present board has no doubts about the personal impartiality of all members of the board in its original composition. The appellant's objections concern the "objective" test, namely the possibility that board members could give raise to an objectively justified fear of partiality due to their decision on similar legal and factual matters in an earlier case.

2.1.3 The Rules of Procedure of the Boards of Appeal (RPBA) and the business distribution scheme for the Technical Boards of Appeal do not foresee any obligation to arrange for non-overlapping boards where similar legal and factual issues have to be decided in different cases. To the contrary, Article 7 of the business distribution scheme foresees that where appeals pending before a board are closely linked, in particular by involving similar legal or factual questions, the Chairman may order that the board shall decide in the same composition (Business distribution scheme of the Technical Boards of Appeal for the year 2013, Supplement to OJ EPO 1/2013, 12).

2.2 Possible conflicts between the Business Distribution Scheme and the desideratum of a detached board

2.2.1 Both the composition of the board in T 1676/11 and the original composition in the present case were determined by the chairman of Board 3310 in accordance with Article 1(2) of the Rules of Procedure of the Boards of Appeal and the applicable business distribution scheme. Due to the identical classification of the applications underlying both the present appeal and T 1676/11, Board 3310 is competent for both cases which means that the members of the board in both cases had to be chosen from the members attributed to Board 3310.

2.2.2 The appellant argued that a board should not be put in a position wherein its members are forced to either confirm or not their previous own judgment. However, the right to a lawful judge also includes the right to a judicial body having a foreseeable composition in accordance with a predetermined business distribution scheme. There may be unavoidable conflicts between the wish for a completely detached board and the requirements of the business distribution scheme from which deviations are allowed only in specific circumstances. In cases where three or more proceedings are related to each other (e.g. a parent and two divisional applications), it would normally be impossible to compose three non-overlapping boards within the business distribution scheme.

2.2.3 In view of the potential conflicts with the business distribution scheme, the mere desire for a board which has not encountered any of the relevant factual and legal issues in a related case cannot justify an obligation to appoint non-overlapping boards in cases concerning divisional and parent applications in the absence of specific facts which are sufficient to raise specific concrete doubts on the ability of the board members to hear the appeal with an objective judicial mind (see J 15/04, Reasons point 8).

2.2.4 It follows that practical considerations and the procedural framework not only gave rise to a provision in the business distribution scheme encouraging identical compositions in closely linked cases (see above point 2.1.3), but may even require that overlapping or identical board compositions are established in cases which may involve closely linked questions.

2.3 Specific circumstances in view of the suspicion of partiality

2.3.1 The right to object against a judge for reasons of suspicion of partiality is meant to prevent a judge being influenced in his or her decision making - be it deliberately or inadvertently - by extraneous considerations, prejudices and predilections, i.e. by considerations other than the arguments he or she considers as being factually and legally relevant for the case under consideration. A suspicion of partiality might arise where there are circumstances possibly justifying a suspicion of a tendency to favour one or more of the parties or to discriminate against one of them. However, any such suspicion must be based on the specific facts of the case. It cannot be justified merely by the submission that a legal question was already decided in a certain way in a prior decision (see G 1/05, OJ EPO 2007, 362, Reasons point 23 with references to national laws).

2.3.2 There are no indications or evidence on file which may be used to rebut the assumption that all members of the original composition would decide on the merits of the present case in an unbiased manner. The two technically qualified members may have decided in a related case on similar technical and legal issues but they did not do so in such outspoken, extreme or unbalanced terms that it would preclude them from dealing with the present case with an open mind and without preconceived attitudes (see R 2/12, interlocutory decision of 26 September 2012, not published in OJ EPO, Reasons point 2.2; G 1/05, Reasons point 24).

2.4 Case law referred to by the appellant

2.4.1 In support of its argument that members of a board should not be put in a position where they are compelled to confirm or not to confirm their own previous judgment, the appellant relied, in particular, on decision T 1028/96. In this case, the board members who had decided the appeal proceedings leading to the grant of the patent had to be replaced in the opposition appeal proceedings, since the legal issues to be discussed in the opposition appeal proceedings were essentially the same as those relevant in the earlier ex-parte appeal proceedings. The board in T 1028/96 referred to Article 19(2) EPC which sets clear limits to overlaps between examining divisions and opposition divisions in the same file and took the position that such limitations should apply all the more to the second instance (T 1028/96, Reasons point 6.6). For the examining divisions assigned for a divisional and its parent application, no provisions exist which limit overlaps between the examining divisions. Accordingly, the examining division in the present case consisted of the same examiners as the examining division for the divisional application underlying decision T 1676/11.

2.4.2 In the view of the present board, cases involving grant and opposition appeal proceedings for the same file have to be clearly distinguished from cases involving parent and divisional applications, and not only in view of Article 19(2) EPC. A board which has taken a specific decision in ex-parte appeal proceedings may be compelled to directly interfere with its own earlier decision if the same issues are relevant in opposition appeal proceedings (for example, if the same amendments were allowed under Article 123(2) EPC before grant and were attacked under Article 100(c) EPC in opposition). Certain decisions taken in the ex-parte appeal proceedings may formally restrict (i.e. under Article 123(3) EPC) the possible outcome of opposition appeal proceedings.

2.4.3 Such possible conflicts and limitations do not exist in the present case. The claims presently on file differ from the claims not allowed in T 1676/11, for example, in that the claims refused under T 1676/11 included product claims whereas the requests presently on file contain only process claims, the subject-matter of said process claims differing substantially from the process claims decided upon in T 1676/11. Furthermore, within the generally applicable procedural rules, the appellant may at any time file new requests and rely on new arguments or evidence, which may or may not be related to the issues decided in T 1676/11, but which may lead to issues being decided differently than in T 1676/11.

2.4.4 In view of the differences which already exist and/or may arise in the future proceedings between the facts of T 1676/11 and those of the present proceedings, in contrast to T 1020/06, the appellant's argument that the subject-matter and the points of law to be discussed in the two cases were identical, cannot hold.

2.5 For the above reasons, the board in its present (alternate) composition does not recognise any sufficient basis for a suspicion of partiality under the terms of Article 24(3) EPC. The request to exclude the members of the original composition who had taken part in T 1676/11 is therefore refused and the appeal proceedings will continue with the original composition of the board.

This decision T 1889/13 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:T188913.20170314. The file wrapper can be found here. Photo obtained via Pixabay under CC0 1.0 license.
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