Delta Patents

T 914/13 - One 73(1) in the hand worth two in the bush?

Delta Patents Patent Law -


During oral proceedings before the Examining Division, an auxiliary request of the applicant was found to meet the requirements of the EPC.  However, in response to the Rule 71(3) EPC communication, the applicant reverted to earlier higher-ranking requests. The application was refused by the ED. 

The applicant appeals, but in its preliminary opinion, the BoA essentially concurs with the ED in respect of the higher-ranking requests, and additionally finds claim 2 of the auxiliary request for which the intention to grant was issued earlier to contravene Art. 84 EPC.

Ultimately, the applicant files a sole main request based on the subject matter of the 'previously allowed' auxiliary request but with claim 2 deleted, and argues that, except for claim 2 having been deleted, the claims of the main request correspond to those on the basis of which the ED had issued its intention to grant during the examination proceedings.

However, rather than ordering a grant, the BoA remits the case back to the ED for further prosecution, while noting that it is not bound to the previous intention to grant, and suggesting that the arguments provided by the applicant in support of inventive step of the main request were to be heard.

Reasons for the Decision
Main request

1. Remittal according to Article 111(1) EPC

The Board avails itself of its power under Article 111(1) EPC to remit the case back to the examining division for further prosecution.

1.1 With respect to the main request, the appellant argued that a Rule 71(3) EPC communication had been previously issued by the examining division on 16 May 2012. Nevertheless the Board is not bound to find the claims allowable merely by the existence of this communication, nor is the examining division. The request has anyway changed from that considered previously.

Further, the appellant has supplied written arguments concerning inventive step.

1.2 At least the following matters appear to require consideration by the examining division:

(a) The dependency of claim 2 reads 'according to any preceding claim'. Whilst this might normally be understandable in the context of the claims alone as meaning the same as 'according to claim 1', page 3, lines 14 and 15 of the description refer to a plurality of both independent and dependent claims which are not present. The resulting inconsistency between the claims and the description appears prima facie to result in a lack of clarity and lack of support by the description (Article 84 EPC).

(b) The two paragraphs of the description from page 3a, line 12 to page 3b, line 6 are indicated as being 'described herein by way of information only'. These paragraphs, at least prima facie, appear to be 'obviously irrelevant' for the invention (Rule 48(1)(c) EPC).

2. For the avoidance of doubt, it should be noted that the Board has not concluded that the subject-matter of claim 1 of the main request involves an inventive step. Since the decision to reject the application only deals with other matters, it appears fitting that the appellant should have a possibility to have its arguments considered at two instances should this be required.

This decision T 914/13 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:T091413.20170720. The file wrapper can be found here. Photo "A bird in the hand is worth two in the bush" by Kate Ter Haar obtained via Flickr under CC BY 2.0 license (no changes made).

J 19/16 - does a loss of rights in the international phase after regional entry have any effect?

Delta Patents Patent Law -

An international application was filed in 2005 (with priority of 2004) with the wrong receiving office -the USPTO- who assigned an application number to it. The international application entered the EP regional phase in Nov 2006, and the EPO assigned a EP application number to it. About three years (!!!) later, the USPTO recognized that they were not a competent receiving office and transmitted the international application to the International Bureau, which assigned it a new international application number. The EPO assigned a new European application number to it. Somewhat later, the EPO issued a loss-of-rights communication due to non-performance of the acts for entry for the application with the new number. The IB/RO notified the (original) applicant's professional representative that the international application (with the new number) was declared to be considered withdrawn for failure to pay the prescribed fees to the IB/RO. Various renewal fees were paid in the European phase. But then, in 2014, the Receiving Section issued a communication that the Euro-PCT application that had two European application numbers assigned would be consolidated as a single application. Furthermore, the appellant was informed that the application could not be processed by the EPO as designated Office, as it was considered withdrawn in the international phase, and that the time limit for requesting review of the findings of the IB/RO under Articles 24(2) and 25(2)(a) PCT seemed to have expired. The Receiving Section on 17 August 2016 decided that the application was deemed to be withdrawn with effect from 22 January 2009. It came to the conclusion that, as the IB/RO with notification of 22 January 2009 considered the international application withdrawn by virtue of Article 14(3)(a) PCT for failure to pay the prescribed fees, its effect as a regular Euro-PCT application (Articles 11(3) PCT, 153(2) EPC) had ceased as from the date of mailing of the notification from the IB/RO, with the same consequences as the withdrawal of a European application (Article 24(1)(ii) PCT). The applicant appealed this decision. Despite a range of arguments, including good faith, the applicant was not successful.


Summary of Facts and Submissions

I. The appellant (applicant) contests the decision of the Receiving Section dated 17 August 2016 declaring that European patent application No. 05 858 797.3 is deemed to be withdrawn with effect from 22 January 2009.

II. The application was based on an international application that was filed by the original applicant Robert Bosch GmbH under the PCT on 2 May 2005 with the United States Patent and Trademark Office (USPTO) as receiving Office, claiming priority of 24 May 2004. It was assigned the international application No. PCT/US2005/015105.

III. The international application entered the European phase on 23 November 2006. The European Patent Office (EPO) assigned it the European application No. 05 742 104.2.

IV. On 12 February 2008 the USPTO, not being competent under Rule 19(1)(2) PCT to receive the international application, transmitted the latter pursuant to Rule 19.4 PCT to the International Bureau of WIPO as receiving Office (IB/RO), which assigned it a new international application number (PCT/IB2005/004218) and informed the original applicant by communication dated 13 June 2008. The EPO subsequently assigned it the new European application No. 05 858 797.3.

V. With communication of 11 December 2008 the Receiving Section issued a noting of loss of rights pursuant to Rule 112(1) EPC in respect of European application No. 05 858 797.3, informing the original applicant that the application was deemed to be withdrawn (Rule 160(1) EPC) for non-performance of the acts required by Rule 159(1) EPC for entry into the European phase.

VI. The IB/RO informed the original applicant's professional representative with notification dated 24 November 2008 that the prescribed fees for the international phase had not been paid and at the same time invited the original applicant to pay the unpaid fees and the late payment fee within one month from the date of mailing. The IB/RO subsequently notified the original applicant's professional representative with letter dated 22 January 2009 that the international application was declared to be considered withdrawn for failure to pay prescribed fees. The EPO as International Searching Authority has never drawn up an international search report.

VII. The application was transferred in 2012 to a first transferee and in 2013 to the current applicant (which is the appellant) as second transferee. At the request of the new representative of the first transferee received on 13 July 2012, the EPO amended the entry in the European Patent Register concerning the representative and subsequently informed the applicant in its official communication dated 19 July 2012.

VIII. Starting in 2007, the renewal fees for the third to eighth year were paid by the original applicant, the renewal fee for the ninth year by the first transferee and the renewal fees for the tenth to twelfth year by the appellant. The latter renewal fee was paid on 24 November 2016 after the EPO with a communication of 5 July 2016 under Rule 51(2) EPC had drawn attention to the missing payment of this renewal fee and to the consequence pursuant to Article 86(1) EPC whereby an application is deemed withdrawn if a renewal fee is not paid in due time.

IX. On 18 September 2014 the Receiving Section issued a communication informing the appellant that, in order to consolidate the proceedings concerning one single Euro-PCT application with two assigned European patent application numbers, proceedings would continue in respect of application No. 05 858 797.3 and that the communication of 11 December 2008 should be disregarded. Furthermore, the appellant was informed that the application could not be processed by the EPO as designated Office, as it was considered withdrawn in the international phase, and that the time limit for requesting review of the findings of the IB/RO under Articles 24(2) and 25(2)(a) PCT seemed to have expired. After the subsequent reply of the appellant dated 25 November 2014 with which it requested "to further prosecute the 'correctly assigned' European application number EP 05858797.3 (PCT/IB2005/004218)", the Receiving Section with a communication of 10 November 2015 reiterated the opinion that it had already expressed.

X. At the request of the appellant, the Receiving Section on 17 August 2016 decided that European patent application No. 05 858 797.3 was deemed to be withdrawn with effect from 22 January 2009 and that all fees paid after that date would be refunded once the decision had become final. It came to the conclusion that, as the IB/RO with notification of 22 January 2009 considered the international application withdrawn by virtue of Article 14(3)(a) PCT for failure to pay the prescribed fees, its effect as a regular Euro-PCT application (Articles 11(3) PCT, 153(2) EPC) had ceased as from the date of mailing of the notification from the IB/RO, with the same consequences as the withdrawal of a European application (Article 24(1)(ii) PCT).

XI. On 17 October 2016, the appellant filed a notice of appeal and paid the appeal fee on the same date. The statement setting out the grounds of appeal was filed on 16 December 2016.

XII. As far as they are relevant for the board's decision, the appellant's submissions may be summarised as follows:

Once a pending international application has validly entered the European phase, its further fate is unaffected by possible deficiencies that occurred during the international phase and become apparent later on. Thus, the fact that the international application was deemed withdrawn did not influence the pendency of the European patent application, which by then had already validly entered the European phase.

Furthermore, the appellant could reasonably have assumed that the EPO had exercised its discretion under Article 24(2) PCT to maintain the effect of the international application despite its deemed withdrawal, as for more than seven years its conduct had suggested that the European patent application was still pending. In this respect, the appellant invoked the principle of good faith or protection of legitimate expectations and cited the allegedly pertinent decision J 14/94. Several circumstances of the present case gave rise to legitimate expectations in the appellant's favour: For example, after the deemed withdrawal of the international application and up to the issuing of the communication from the Receiving Section on 18 September 2014, the EPO did not issue a communication indicating that the European patent application was deemed to be withdrawn. Also, as a consequence the Register up to said communication did not contain any information on or indication of the deemed withdrawal of the application which the appellant or third parties could obtain by inspecting the Register. Furthermore, the EPO continued the grant process, as can be seen from the amendment of entries in the Register concerning the applicant's representative, and accepted all renewal fees paid by the applicants. The notice from the EPO dated 5 July 2016 led to the reasonable assumption that the application was pending before the EPO and that only failure to pay the renewal fees in due time would lead to deemed withdrawal.

XIII. In a communication under Article 15(1) RPBA, annexed to the summons to oral proceedings, the board informed the appellant of its provisional opinion that the loss of rights which had occurred in the international phase could no longer be remedied in the national phase.

XIV. The appellant did not reply to the board's communication. However, with letter of 1 August 2017 it informed the board that it would not attend the oral proceedings.

XV. The board held oral proceedings on 3 August 2017. As announced, the duly summoned appellant did not attend. During the oral proceedings, the board considered the appellant's request put forward in the statement of grounds of appeal that the decision under appeal be set aside and that the case be remitted to the department of first instance for further prosecution. At the end of the oral proceedings, the chairwoman announced the board's decision.

Reasons for the Decision

1. The appeal complies with the requirements of Articles 106 to 108 and Rule 99 EPC and is therefore admissible.

2. The duly summoned appellant did not attend the oral proceedings. In accordance with Rule 115(2) EPC, however, the proceedings continued without it. In accordance with Article 15(3) RPBA, the board relied for its decision only on the appellant's written submissions. The board was in a position to decide at the conclusion of the oral proceedings since the case was ready for decision (Article 15(5) and (6) RPBA), and the voluntary absence of the appellant was not a reason for delaying the decision (Article 15(3) RPBA). The principle of the right to be heard pursuant to Article 113(1) EPC was observed since, by absenting itself from the oral proceedings, a party gives up this opportunity to be heard (see the explanatory notes to Article 15(3) RPBA cited in T 1704/06, not published in OJ EPO).

3. In its annex to the summons the board gave the following opinion on the merits of the case:

"2. According to Article 24(1)(ii) PCT, if for instance an inter­national application is considered withdrawn by virtue of Article 14(3)(a) PCT, the effect of the international appli­cation provided for in Article 11(3) PCT in principle ceases in any designated state, with the same consequences as the withdrawal of any national application in that state. Exceptions to this rule are provided in Rule 90bis.6(a) PCT, in Article 25(2) PCT and in Article 24(2) PCT.

3. The Board of Appeal has examined the file and considered the written arguments submitted by the Appellant, in particular in the statement of 16 December 2016 setting out the grounds of appeal. The Board's provisional view is that the loss of rights concerning the application at issue which occurred in the inter­national phase can no longer be remedied in the national phase and that the Receiving Section therefore - at least as regards the outcome - acted correctly when it refused the Appellant's request to further prosecute the application. In reaching that provisional view, which - if maintained - will lead to the dismissal of the appeal, the Board has taken into account the considerations set out in the following paragraphs.

4. No effects of valid entry into the European phase

a. The Appellant submitted that once a still pending in­ter­national application has validly entered the European phase, its further fate is unaffected by possible deficiencies that occurred during the international phase and become apparent later on. Thus, the fact that the inter­na­tio­nal application was deemed withdrawn did not influence the pendency of the European patent appli­cation which by then had already validly entered the European phase (see points 2.4, 2.5 of the grounds of appeal).

b. This view seems to ignore Article 24(1)(ii) PCT (see point 2 above), according to which possible deficiencies of the international application that occur during the inter­national phase are generally relevant for its effect as a direct European application and as a rule come to bear in respect of the latter.

c. Furthermore, the competence of the designated Office to process or examine the application (only) after effective entry into the national phase (Articles 23, 22 PCT) does not prevent the receiving Office from undertaking a procedural step regarding the non-payment of fees prescribed under Article 3(4)(iv), Rule 27.1 PCT in the inter­national phase. In fact, Article 14(3)(a) PCT does not impose any obligation on the receiving Office to issue a corresponding declaration under said regulation within a certain period of time after the expiry of the prescribed time limits. In addition, the PCT neither contains a provision which - complementary to the provision laid down in Article 23 PCT - generally denies the competence of the receiving Office to take procedural steps once the application has entered the national phase nor a provision which assigns the competence for issuing the aforementioned declaration to the designated Office after the expiry of a certain time limit. Hence, parallel competences of receiving Office and designated Office regarding the same application are not excluded.

d. As a result, neither the effective entry into the European phase nor the announced disregard of the noting of loss of rights dated 11 December 2008, communicated by the European Patent Office on 18 September 2014, are appropriate to prevent the already mentioned legal consequences that derive from failure to pay the prescribed fees during the international phase.

5. Request for review under Article 25(2) PCT

a. Where the conditions under Article 25(2) PCT are met, every designated Office must maintain the effect of the international application as a national patent application pursuant to Article 11(3) PCT. Article 25(2) PCT obliges the designated Office to review the decision of the receiving Office at the request of the applicant and to main­tain the effect of the application if the decision "was the result of an error or omission".

b. However, the original applicant never filed such a re­view request pursuant to Article 25(2) PCT within the prescribed time limit, and the Appellant too did not rely on this remedy. Having said that, as far as the non-payment of the fees is concerned, and possible procedural errors relating to the transmittal of the international application to the International Bureau as receiving Office notwithstanding, the International Bureau/re­ceiving Office's decision dated 22 January 2009 is clearly not the result of an error: it is an undisputed fact that the original applicant failed to pay the fees due.

6. Request for excuse under Article 24(2) PCT

a. As a further exception to the principle pursuant to Article 24(1)(ii) PCT, the European Patent Office as designated Office by virtue of Article 24(2) PCT may maintain the effect of the international application as a European patent application pursuant to Article 11(3) PCT for other reasons, if the loss of rights occurred due to a mistake made by the applicant.

b. The Appellant expressly referred to this remedy when stating that it could reasonably have assumed that the European Patent Office had exercised its discretion under said Article, as for more than seven years its conduct had suggested that the European patent application was still pending (see points 2.13, 2.14 of the grounds of appeal).

c. Contrary to the assessment of the Receiving Section expressed in its communications of 18 September 2014 and 10 November 2015, the Board does not hold that in the present case a request for excuse under Article 24(2) PCT is already ruled out because the alleged procedural prerequisites have not been fulfilled. In fact, the two-month time limit pursuant to Article 25 PCT is not to be applied for circum­stances that are to be considered under Article 24(2) PCT: that would not be in line with Article 48(2)(a) PCT which obliges a contracting party to the PCT to "excuse, for reasons admitted under its national law, any delay in meeting any time limit". Thus, the time limit, if any, for making a request to be excused under Article 24(2) PCT is subject to national law, and to national law only.

d. However, the Appellant has not presented any facts and arguments whatsoever as to why - by ignoring the notifi­cations of 24 No­vem­ber 2008 and 22 January 2009 - the fees due in the inter­national phase were not paid, and why the European Patent Office as designated Office under Article 24(2) PCT should already have excused this deficiency that lay in the area of the applicant's own res­pon­si­bility.

7. Principle of the protection of legitimate expectations

a. The protection of legitimate expectations is a fundamental principle of European patent law that has been expli­cit­ly recognised by the Enlarged Board and which can be taken into consideration under Article 24(2) PCT. There is no time limit for invoking it.

b. The protection of the legitimate expectations of users of the European patent system requires that such users must not suffer a disadvantage as a result of having relied on erroneous information received from the European Patent Office or on a misleading communication. It also requires the European Patent Office to warn the applicant of any loss of rights if such a warning can be expected in all good faith. Furthermore, it is in­cum­bent on both the European Patent Office and users of the European patent system who are parties to proceedings be­fore it to act in good faith. Users of the Euro­pean patent system have a responsibility to take all ne­cessary steps to avoid a loss of rights.

c. The Board is of the preliminary opinion that neither the original applicant nor the present applicant (Appellant) as its successor in title can successfully invoke the principle of the protection of legitimate expectations.

d. As regards the original applicant, the principle of the protection of legitimate expectations is not applicable in its favour since it did not comply with the subjective prerequisite of acting in good faith.

aa. This is due to the fact that the original applicant's professional representative got both the notifi­cation dated 24 November 2008 from WIPO's Receiving Office, containing the - required, see point 7. b. above - war­ning that the prescribed fees had not been paid to­gether with the invitation to pay them within one month from the date of mailing and the note about the le­gal conse­quences of failing to do so, and the noti­fication dated 22 January 2009 from the Receiving Office with the declaration that the inter­national appli­­cation was considered to be withdrawn due to the failure to pay prescribed fees. Thus, once the applicant has got un­am­biguous knowledge of its loss of rights, a basis for the legitimate expectation that this right might still per­sist or resume cannot exist.

bb. Herein is to be found the decisive difference to the Board's ruling in J 14/94 which the Appellant has cited (see point 2.16 of the grounds of appeal): there the European Patent Office in the case of an unpaid renewal fee neither issued a notice drawing the applicant's attention to the possi­bility offered by Article 86(2) EPC 1973 nor issued there­upon a notice under Rule 69(1) EPC 1973 informing the applicant of its loss of rights due to the unpaid fee. In other words, in that case the European Patent Office had not informed the applicant of the outstanding payment, whereas here the former applicant has explicit­ly been notified of the loss of rights, and hence given the opportunity to file a petition for review of this decision under Articles 25(2), 24(2) PCT, an opportunity which it did not take. Therefore the former applicant could not continue the examination procedure in good faith.

cc. The former applicant additionally appears undeserving of protection because it showed a lack of good faith by ignoring the communication from the European Patent Office dated 11 December 2008 instead of clarifying that the payment of the prescribed fees under Rule 159(1)(c)-(f) EPC had in fact already taken place in respect of application number EP 05 742 104.2. The same applies to the fact that the former applicant apparently ignored the notification from the Inter­national Bureau of WIPO/Receiving Office of 13 June 2008, too, which expressly asked it to indicate, in any future correspondence in connection with the underlying international application, the international application number newly assigned by the Receiving Office (PCT/IB2005/004218). This conduct shown by the former applicant seems at odds with the require­ment that users of the European patent system must act in good faith, which is why they have a responsibility to take all necessary steps to avoid a loss of rights (see point 7. b. above) and therefore could for instance have an obligation to request a clarifi­cation from the European Patent Office (see T 905/90, OJ EPO 1994, 306, 316, 318, points 6 and 7 of the Reasons).

dd. Hence, at the time the international patent appli­cation at issue was transferred to the first transferee on 30 May 2012 and later to the Appellant on 5 August 2013, the effect of the international application as a European patent application had already ceased and could not be restored under the principle of the protection of legitimate expectations.

e. As a consequence, the Appellant - who, by the way, has not explicitly stated that it was not informed by its predecessor in title of the loss of rights that had already occurred - may not, in its role as transferee, successfully invoke the principle of the pro­tection of legitimate expectations: since the effect of the international appli­cation as a European patent application had already ceased at the time it was transferred to the Appellant (see point 7. d. dd. above), a resumption of the rights conferred by the app­lication cannot be effected by the mere transfer of the application to third parties acting in good faith.

f. In addition, none of the aspects listed by the Appellant in its statement setting out the grounds of appeal can give rise to legitimate expectations in favour of the Appellant in its own role as applicant.

aa. Firstly, this applies to the fact that the European Patent Office - up to the issuance of the communication from the Receiving Section on 18 September 2014 with which the Appellant was notified of the loss of rights for the first time and contrary to its obligation pursuant to Rule 112(1) EPC regarding application number EP 05 742 104.2 - did not issue a communication that the European patent application was deemed to be withdrawn (see point 2.7 of the grounds of appeal), as well as, over a period of eight years (2007-2014) and despite said loss, did not refund the 3**(rd) to the 10**(th) renewal fees (see point 2.9 of the grounds of appeal).

(1) Sources of legitimate expectations generally require positive actions, such as erroneous information provided by the European Patent Office in individual cases (e.g. in the form of communications to the party) or contained in official statements of general applicability and published by the European Patent Office. A mere omission by the European Patent Office may thus give rise to legitimate expectations only if further circumstances comparable to positive actions arise, such as a misleading communication.

(2) Consequently, also in the case underlying the already cited decision J 14/94 the Board held that - in the absence of a provision in the European Patent Convention imposing any obligation on the European Patent Office to issue a corresponding communication under Rule 69(1) EPC 1973 within a certain period of time after a loss of rights has occurred - the mere fact that a communication pursuant to Rule 69(1) EPC 1973 is issued late may not, in itself, reverse a loss of rights (see point 3 of the Reasons). In the concrete case, however, additional circumstances existed that led to the legitimate belief that the appli­cation was still pending, since the European Patent Office not only accepted all the fees paid by the appellant but also continued substantive examination by issuing several communications inviting the appellant to perform procedural steps re­quired with a view to a later grant of the patent. Consequently, the appellant, trusting that the application was still pending, invested time and effort in the exami­nation procedure (see points 4 and 5 of the Reasons).

(3) In the present case, on the contrary, the European Patent Office - apart from accepting payments of renewal fees - did not issue any communi­cations re­garding the substantive examination of the appli­ca­tion or otherwise conduct itself in a way that suggested that it would continue or rather, in the absence of an International Search Report, start the substantive examination procedure. The same applies to the fact submitted by the Appellant (see point 2.8 of the grounds of appeal) that the European Patent Office, upon request by a new representative received on 13 July 2012, amended the entries in the Register of European Patents concerning the representative and subsequently informed the applicant in its official communication dated 19 July 2012: the amendment and the communi­cation hereof referred solely to a circumstance pertaining to the sphere of the applicant and did not relate to the substantive examina­tion procedure. Hence, the Appellant was at no time prompted to invest any time or effort in this procedure.

(4) Accordingly, also in J 1/08 the Board held that the mere fact that for an admittedly extremely long time the European Patent Office has simply not dealt with the application is not sufficient to justi­fy a legitimate expectation on the applicant's part that the application is regarded by the European Patent Office as still pending (see point 12 of the Reasons).

(5) As a result, the fact that the European Patent Office for a long period did not communicate the loss of rights and accepted the fees paid by the applicants is not enough to give rise to le­gitimate expectations.

bb. Furthermore, contrary to the Appellant's view (see point 2.9 of the grounds of appeal) the notice from the European Patent Office dated 5 July 2016, infor­ming it that the renewal fee had not been paid by the due date, can also not be regarded as a source of legitimate expectations.

(1) This is already due to the fact that this notice was issued after the communication from the Receiving Section on 18 September 2014, with the effect that the Appellant at the time of said notice was already aware of the loss of rights and could therefore no longer act in good faith.

(2) In addition, the indication in the penultimate paragraph on page 1 of the notice ("If the renewal fee and the additional fee are not paid in due time, the European patent application shall be deemed to be withdrawn (Art. 86(1) EPC)") is not a legitimate basis for a reasonable expectation that the appli­cation at issue is pending before the European Patent Office and that only failure to pay the renewal fees in due time would lead to a deemed withdrawal, as asserted by the Appellant. Rather, the cited sentence draws attention only to the legal conse­quences concerning the sole subject of the notice, i.e. the payment of the renewal fee and the additional fee, and does not make any statement whatsoever about further possible deficiencies concerning the application that may lead to its deemed withdrawal.

cc. Lastly, these findings are not called into question by the fact relied on by the Appellant (see points 2.11 and 2.12 of the grounds of appeal) that the Register of Euro­­pean Patents, up to the issuance of the official communication from the Receiving Section of 18 September 2014 and contrary to the registration obligation pursuant to Article 127, first sentence, and Rule 143(1)(n) EPC, did not contain any information or indication of the deemed withdrawal of the application at issue which the Appellant or third parties could obtain by inspecting the Register: the European Patent Convention does not contain any provisions stipulating that entries (or omission of entries) in the Register­ can be invoked against the European Patent Office itself or third parties. In fact, entries in the European Patent Register have a declaratory effect only; the commencement, the existence and the cessation of a right depend only on their respective substantive requirements, which is why an entry (or lack of one) in the European Patent Register does not necessarily mean that its content is correct (see T 799/97, point 3.2 a) of the Reasons; see also T 854/12, point 1.2.5 of the Reasons). As a consequence, the Appellant could not legitimately conclude from the absence of an entry in the Register about the loss of rights that there were no obstacles to continuing the grant process."

4. The appellant did not submit further arguments as to substance against this opinion.

After having reconsidered the case, the board sees no reason to deviate from its preliminary opinion as given in point 3 above. The board therefore comes to the conclusion that the loss of rights which occurred in the international phase can no longer be remedied in the national phase. Thus, the finding of the Receiving Section that the patent application at hand is deemed to be withdrawn with effect from 22 January 2009 and that all fees paid after this date are to be refunded is justified. The appeal is therefore to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.


This decision J 19/16 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:J001916.20170803 . The file wrapper can be found here. Photo "Ghosts" by Sean MacEntee obtained via Flickr under CC BY 2.0 license (no changes made).

T 1329/04

Delta Patents Patent Law -


In the decision T 488/16, recently discussed in this blog, it became again clear that the EPO is strict in allowing post-published evidence to prove inventive step. The core decision where this follows from is this decision, T 1329/04. 
The cathwords of this decision: The definition of an invention as being a contribution to the art, i.e. as solving a technical problem and not merely putting forward one, requires that it is at least made plausible by the disclosure in the application that its teaching solves indeed the problem it purports to solve. Therefore, even if supplementary post-published evidence may in the proper circumstances also be taken into consideration, it may not serve as the sole basis to establish that the application solves indeed the problem it purports to solve.
Thus, post-published evidence of a technical effect/advantage is allowed as long as there was enough information in the application as filed to make this 'new' information already plausible. 


Summary of Facts and Submissions

I. The appeal lies from the decision of the examining division dated 5 August 2004 refusing the European patent application No. 94 907 259.9 published under the international application No. WO 94/15966 with the title "Growth Differentiation Factor-9" claiming priority from US 08/003303 of 12 January 1993. The decision was based on the main request and auxiliary requests 1 to 3 then on file.
Claim 1 of the main request read as follows:

"1. A polynucleotide encoding a polypeptide having GDF-9 activity selected from the group consisting of:

(a) a polynucleotide having the nucleic acid sequence of SEQ ID NO:3;

(b) a polynucleotide encoding a polypeptide having the amino acid sequence of SEQ ID NO:4;

(c) a polynucleotide which is an RNA sequence corresponding to the polynucleotide of (a) or (b);

(d) a polynucleotide encoding a fragment of the polypeptide encoded by any one of (a) to (c); and

(e) a polynucleotide which hybridises under stringent conditions with the polynucleotide of any one of (a) to (d)."

The main request was found to contravene the requirements of Articles 56, 57, 83 and 84 EPC.

The examining division took document (3) as closest prior art and defined the problem to be solved as being the provision of a putative further member of the TGF-ß super family of protein and/or nucleic acid encoding sequences. The examining division held, in particular, that the mouse GDF-9 cDNA (SEQ ID NO: 3) as well as the protein sequence (SEQ ID NO: 4) did not involve an inventive step because the cloning of a sequence of a putative new member of a gene family based on conserved sequence motifs would be achieved as a matter of routine and also, because the minimal characterisation given, i.e. the tissue specificity of GDF-9 expression was not sufficient to elucidate its physiological function or putative involvement in pathologies or to provide any surprising effect in view of the prior art. The many speculations about the function of GDF-9 which had been made on the basis of tissue distribution were found to be obvious. Finally, the examining division, in this context, refused to take into account the teachings of post-published documents showing that GDF- 9 was a growth differentiation factor because the application per se did not provide any evidence in this respect. The same objections were considered to apply to auxiliary requests 1 to 3 which were found to contravene the requirements of Articles 56, 57, 84 EPC.
II. Following the filing of the appeal, the examining division did not rectify its decision and remitted the case to the board of appeal (Article 109 EPC). Pursuant to Article 11(1)of the Rules of Procedure of the Boards of Appeal, the board sent a communication indicating its preliminary, non-binding opinion.

III. In reply thereto, the appellant filed on 26 May 2005 a further submission together with a new main request and two new auxiliary requests to replace the corresponding previous requests on file. The main request was then withdrawn during oral proceedings before the board which took place on 28 June 2005. The first and second auxiliary request filed on 26 May 2005 were then taken as main and auxiliary requests, respectively. Claim 1 of the new main request read as follows:

"1. A polynucleotide encoding a polypeptide [-] selected from the group consisting of:

(a) a polynucleotide having the nucleic acid sequence of SEQ ID NO:3;

(b) a polynucleotide encoding a polypeptide having the amino acid sequence of SEQ ID NO:4;

(c) a polynucleotide which is an RNA sequence corresponding to the polynucleotide of (a) or (b);

(d) a polynucleotide encoding a fragment of the polypeptide encoded by any one of (a) to (c), which fragment causes growth and differentiation of oocytes; and

(e) a polynucleotide which hybridises under stringent conditions with the polynucleotide of any one of (a) to (d) and encodes a polypeptide which causes growth and differentiation of oocytes." (the differences with claim 1 refused by the examining division are shown in bold).

Claims 2 to 5 related to further features of the polynucleotide of claim 1. Claims 6 to 8, 9 to 11 were respectively directed to a vector/host cells including/transformed by, the polynucleotide of earlier claims. Claims 12 and 13, 14 to 16 respectively related to the polypeptide encoded by the polynucleotide of any one of claims 1 to 5 and to antibodies specific to that polypeptide.

Claim 1 of the auxiliary request corresponded to claim 1 (a) to (c) of the main request.

IV. The documents mentioned in the present decision are the following:

(1): McPherron, A.C. and Se-Jin Lee, J. Biol.Chem., Vol. 268, No. 5, pages 3444 to 3449, February 1993;

(2): Se-Jin Lee, Proc.Natl.Acad.Sci.USA, Vol. 88, pages 4250 to 4254, May 1991;

(3): Se-Jin Lee, Mol.Endocrinol., Vol. 4, No. 7, pages 1034 to 1040, 1990;

(4): Jinwen Dong et al., Nature, Vol. 383, pages 531 to 536, 10 October 1996;

Exh.E: Hayashi, M. et al., Endocrinology, Vol. 140, No. 3, pages 1236 to 1244, 1999.

V. The appellant's submissions in writing and during oral proceedings regarding inventive step may be summarized as follows:

Document (3) was the closest prior art. It disclosed the identification of a novel member (GDF-1) of the transforming growth factor-Beta family (TGF-Beta). The GDF-1 cDNA was isolated by screening a cDNA library constructed from mouse embryos with oligonucleotides selected on the basis of the amino acid sequences of conserved regions amongst members of the superfamily. The GDF-1 polypeptide was shown to have all of the structural characteristics of members of the family and, thus, was acknowledged as belonging to it.

The problem to be solved could be defined as providing a new growth differentiation factor of the TGF-Beta family.

The solution provided was the polynucleotide SEQ ID NO:3 encoding the polypeptide SEQ ID NO: 4 (GDF-9; claim 1).

Although being slightly different from the cloning method disclosed in document (3), the method used to isolate GDF-9 cDNA needed not be taken into account when assessing inventive step. Inventive step was to be acknowledged on the basis of the unexpected structural properties of GDF-9. Its sequence was only very weakly conserved (no more than 34% homology with known members of the TGF-Beta family) and, furthermore, it contained only six cysteine residues instead of the seven cysteine residues which were a key characterising feature shared by all members of the family. A further distinguishing property was that GDF-9 expression was restricted to ovarian tissue whereas GDF-1 expression had been shown to occur not only in brain but also in ovary and adrenal gland (document (2), passage bridging pages 4250 and 4251).

The present case was, in fact, analogous to that dealt with in decision T 182/03 of 23 June 2004 where inventive step was acknowledged to a nucleic acid encoding human cAMP-specific phosphodiesterase (PDEIVB) of SEQ ID NO: 2, on the basis of the unique structural features of the enzyme and of its restricted pattern of expression. The then competent board had accepted post- published evidence that a drug had been developed on the basis of the enzyme's structural properties as supportive of inventive step.

In the present case, the appellant had also filed numerous post-published documents as further evidence of the role of GDF-9 as a growth differentiation factor. Admittedly, this evidence served to support the description in the application as filed of presumed functions of GDF-9, rather than to support any kind of technical evidence that GDF-9 would be capable of performing any one of these. Yet, predictions should be permitted because of the "first to file" approach of the European patent system which forced the applicant to cover all subject-matter connected to the invention. Furthermore, in accordance with the case law (T 939/92 OJ EPO 1996, 309, point 2.6.2 of the decision), reasonable predictions of relations between chemical structure and biological activity could be taken into account while assessing inventive step. Thus, the combination of the predictions regarding the functions of GDF-9 - as the post-published documents corroborated - with the disclosure of the structural properties specific to GDF-9 was sufficient evidence for a surprising effect to be acknowledged, which warranted recognition of inventive step.

VI. The appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the first or second auxiliary requests, to be taken as main and auxiliary requests, filed on 26 May 2005.

Reasons for the Decision

Main and auxiliary requests

Article 56 EPC; inventive step of the subject-matter of claim 1(a), i.e. a polynucleotide having the nucleic acid sequence of SEQ ID NO:3 and claim 1(b), i.e. a polynucleotide encoding a polypeptide having the amino acid sequence of SEQ ID NO:4.

1. The closest prior art is document (3), a study in the field of cell differentiation. In its introductory part, it provides a list of polypeptide factors which play critical roles in regulating differentiation processes during embryogenesis. These factors are regrouped in a superfamily, the TGF-Beta superfamily, on the basis of their functional and structural relationships to the transforming growth factor-Beta which itself has influence on a wide variety of differentiation processes such as adipogenesis, myogenesis etc.. The structural features common to the family members are discussed on page 1035, right-hand column, last paragraph to page 1037, left-hand column, first paragraph. They reside in the C-terminal domain which starts with a cluster of basic residues. Seven cysteine residues are conserved with their characteristic invariant spacing (16/16 members of the family; Fig.3A). Furthermore, there exists amino acid sequence homology between the TGF-Beta family members in the regions starting with the first conserved cysteine residue and extending to the C-terminal end (Fig. 3B).

2. The aim of the work described in document (3) is to isolate a further member of the TGF-Beta family. A cDNA library is constructed and screened with oligonucleotides selected on the basis of the amino acid sequences of conserved regions amongst known members of the family. A positive recombinant clone is obtained which carries a cDNA encoding a 357 amino acids long protein designated GDF-1. A comparison (cf. page 1035, right-hand column) of the GDF-1 122 amino acids long C-terminal domain with that of known members of the TGF-Beta family shows the presence of the cluster of basic residues at the beginning of the domain, of the seven cysteine residues with their characteristic spacing as well as of many of the other highly conserved amino acids. In addition, GDF-1 is 52% homologous to a previously identified member of the family: Vg-1 (page 1037, left-hand column). On page 1038 (right-hand column), it is mentioned that: "An elucidation of the specific role(s) played by GDF-1 during embryogenesis and/or adult animals awaits characterization of the temporal and spatial patterns of GDF-1 mRNA expression and the functional activities of GDF-1 protein both in vitro and in vivo." Yet, it is concluded on the basis of the structural analysis that "the predicted sequence of GDF-1 clearly identifies it as a new member of this superfamily." (cf. page 1038, left-hand column).

3. It follows from the overall information given in document (3) that, while the TGF-Beta superfamily was initially identified by comparing the sequences of factors having a common role (their involvement in differentiation), once an unambiguous consensus sequence had been defined, the skilled person was prepared to accept that a polypeptide belonged to the TGF-Beta family if it exhibited this consensus sequence, even in the absence of any evidence as to its role.

4. Starting from document (3), the problem to be solved can be defined as isolating a further member of the TGF-Beta superfamily.

5. The solution provided is the polynucleotide of SEQ ID NO:3 encoding the polypeptide of SEQ ID NO:4, denoted GDF-9 (claim 1(a) and (b)).

6. Whether or not the problem as defined in point 4 above has been plausibly solved, i.e. whether or not it is plausible that the molecule as defined in point 5 above constitutes a further member of the TGF-Beta superfamily needs to be investigated.

7. In the application as filed (pages 10 and 11), GDF-9 is described as a 441 amino acids long protein having a C- terminal domain preceded by a putative tetrabasic proteolytic processing site. Yet, it does not exhibit the most striking structural feature which serves to establish whether or not a polypeptide belongs to the TGF-Beta family: namely the presence of the seven cysteine residues with their characteristic spacing; in fact, only six cysteine residues are present (cf. page 11, lines 3 to 9). The common general knowledge regarding cysteine residues is that because of their ability to form S-S bridges, they play a fundamental role in the tertiary structure of proteins, which tertiary structure is to a very large extent responsible for functional activity. Accordingly, any change in the TGF-Beta characterising pattern of seven cysteine residues and their invariant spacing would be expected to have significant repercussions on the function of any TGF-Beta family member. In the same manner, a molecule which does not exhibit the "seven cysteine residues pattern" cannot clearly and unambiguously be considered a member of the TGF-Beta family, unless further evidence is available to that effect.

8. Furthermore, as already mentioned above, members of the TGF-Beta superfamily share sequence homology. In the part of the application as filed describing the prior art related to the invention (page 2), it is disclosed that subgroups in the family had been defined according to the percentage of homology between members, the members of a given subgroup being from 70% to 90% homologous. Here, GDF-9 is very far from fulfilling this criteria as its sequence is stated to be significantly divergent from those of other family members (cf. page 28), the maximal percentage of homology which was observed being 34% with the bone morphogenetic protein, BMP-4. This implies that GDF-9 cannot be attributed to any subgroup and, thus, must at best be considered as the first member of a yet unidentified subgroup. This finding and that in point 7 lead to the conclusion that, contrary to GDF-1 in document (3), GDF-9 cannot be clearly and unambiguously identified as a member of the TGF-Beta superfamily by only using a "structural approach".

9. Of course, the situation could most probably be looked at differently if it had been demonstrated in the application as filed that GDF-9 played a role similar to that of the transforming factor-Beta (as was the case for all of the factors which initially served to define the superfamily). Yet, there is no evidence at all in this respect. In fact, the application only discloses that expression of GDF-9 is localised in ovarian tissues, which per se is useful but insufficient information in relation to any function the molecule might have.

10. As already pointed out above (cf. point 8), in the application (page 28), it is admitted that "..., the sequence of GDF-9 is significantly diverged from those of other family members". Yet, functions of members of the TGF-Beta superfamily previously isolated from ovarian follicular fluid (inhibins) or shown to inhibit ovarian cancer (MIS) are recited, and tentatively and presumptively attributed to GDF-9. Further putative roles are also suggested for GDF-9 which cover some of the effects observed with TGF-Beta (paragraphs bridging pages 8 and 9). At oral proceedings, it was argued that speculations of this kind should be permitted because of the "first to file approach" of the European patent system which forced the applicant to cover any and all subject-matter connected with its invention. The board is unable to endorse this reasoning. On the contrary, in a first-to-file system the (earlier) filing date of the application, not the date at which the invention was made determines to whom of several persons having made an invention independently of each other, the right to a European patent belongs (cf. Article 60(2) EPC). Hence, it is particularly important in such a system that the application allows to conclude that the invention had been made, i.e. that a problem had indeed been solved, not merely put forward at the filing date of the application. Therefore, the issue here is rather how much weight can be given to speculations in the application in the framework of assessing inventive step, which assessment requires that facts be established before starting the relevant reasoning. In the board's judgment, enumerating any and all putative functions of a given compound is not the same as providing technical evidence as regard a specific one.

11. Accordingly, as a significant structural feature fails to be identical in TGF-9 and the members of the TGF- Beta superfamily, and no functional characterisation of TGF-9 is forthcoming in the application, it is concluded that the application does not sufficiently identify this factor as a member of this family i.e. that there is not enough evidence in the application to make at least plausible that a solution was found to the problem which was purportedly solved.
12. The appellant filed post-published evidence (e.g. document (4) and Exhibit E) establishing that GDF-9 was indeed a growth differentiation factor. This cannot be regarded as supportive of an evidence which would have been given in the application as filed since there was not any. The said post-published documents are indeed the first disclosures going beyond speculation. For this reason, the post-published evidence may not be considered at all. Indeed, to do otherwise would imply that the recognition of a claimed subject-matter as a solution to a particular problem could vary as time went by. Here, for example, had the issue been examined before the publication date of the earliest relevant post-published document, GDF-9 would not have been seen as a plausible solution to the problem of finding a new member of the TGF-Beta superfamily and inventive step would have had to be denied whereas, when examined thereafter, GDF-9 would have to be acknowledged as one such member. This approach would be in contradiction with the principle that inventive step, as all other criteria for patentability, must be ascertained as from the effective date of the patent. The definition of an invention as being a contribution to the art, i.e. as solving a technical problem and not merely putting forward one, requires that it is at least made plausible by the disclosure in the application that its teaching solves indeed the problem it purports to solve. Therefore, even if supplementary post-published evidence may in the proper circumstances also be taken into consideration, it may not serve as the sole basis to establish that the application solves indeed the problem it purports to solve.
13. The appellant cited two decisions in support of its case. In T 182/03 (supra), inventive step was acknowledged to human cAMP-phosphodiesterase on the basis of its unexpected properties, it being structurally divergent from other phosphodiesterases and its expression being restricted to specific tissues. In this earlier case, however, the question of whether or not the enzyme was a solution to the problem to be solved - which has to be positively answered before any other criteria are taken into consideration - did not arise. Thus, the rationale underlying said decision has no bearing on the present case.

14. Decision T 939/92 (supra) was cited insofar as it held that it was possible to take into account predictions of relations between chemical structure and biological activity when assessing inventive step. That is indeed what is stated in point 2.6.2 of the decision, the sentence however continues to "... but ... there is a limit beyond which no such prediction can be validly made." In the board's judgment, the present case goes beyond the acceptable limit in the sense of that decision because the chemical structure of GDF-9 is not that for which the predicted biological function would be expected (see points 7 and 8, supra).

15. For the above reasons, the main request is refused for lack of inventive step of the subject-matter of claim 1 (a) and (b). As the same subject-matter is found in claim 1 of the auxiliary request, the said request is also refused for the same reasons.

ORDER

For these reasons it is decided that:

The appeal is dismissed.
This decision T 1329/04 (pdf) has European Case Law Identifier:ECLI:EP:BA:2005:T132904.20050628. The file wrapper can be found here. Photo by AKuptsova obtained via Pixabay under the Pixabay License (no changes made).

T 158/14 - Hidden in plain sight

Delta Patents Patent Law -


If your appeal to an opposition is entirely based on new documents, which moreover could have been found with a straightforward Espacenet search, should your appeal then be inadmissible? 
The opponent filed two new Japanese documents (D9 and D10) together with its appeal. The proprietor objects to these documents on the basis that they could easily have been found in a search during the opposition period. In particular, the proprietor observes that an Espacenet search in the same EPC class as the opposed patent for the year prior to the priority year gives document D10 as its very first hit.  Document D9 requires a bit more work, but is found in a similar manner. According to the opponent, basing an appeal on these late-filed documents is not only inadmissible but amounts to an abuse of procedure.
The opponent has it own complaints about the proprietor though. Three days before the oral proceedings, a further response is filed of about 90 pages, including new requests. 
The board doesn't go along with either objection. 

Reasons for the Decision
1. Admissibility of the appeal and of the documents D9 and D10
1.1 The patentee argued that the appeal was inadmissible for the reason that the opponent's grounds of appeal were exclusively based on the newly cited documents D9 and D10, documents which should not be admitted into the proceedings because they were late-filed and not prima facie relevant for the subject-matter of claim 1 as maintained according to the interlocutory decision of the opposition division.
The patentee explained that it would have been easy for the opponent to find D9 and D10 in public databases, in particular for the reason that D9, D10 and the present patent had at least one of the IPC classes G01N1/36 or G01N1/28 in common. The mere fact that D9 and D10 were not written in an official EPO language was not a sufficient reason for allowing the opponent to introduce these documents into the proceedings after the nine-month period defined in Article 99(1) EPC. The opponent was supposed to have searched during the nine-month period all existing databases, including those of Japanese utility models, either itself or by mandating a Japanese search company. Furthermore, none of the documents D9 and D10 was novelty destroying or rendered obvious the subject-matter of claim 1. The patentee concluded that D9 and D10 were late-filed, technically not relevant and, therefore, should not be admitted into the proceedings.
In response to a question from the board during oral proceedings, the patentee stated that the filing of D9 and D10 with the statement of grounds of appeal amounted to an abuse of procedure in the sense that these documents were late-filed and that no other objections than those based on D9 and D10 were raised by the appellant in its statement of grounds of appeal against the patent as maintained by the opposition division.
1.2 The opponent was of the view that its appeal fulfilled all the legal admissibility requirements foreseen by the EPC.
It further insisted that documents D9 and D10 were not withheld deliberately by the opponent but that they were retrieved by pure coincidence after the decision of the opposition division with the help of a Japanese client of the opponent, the client having given a hint of the existence of Japanese patent documents disclosing the same invention as the present patent. It was not realistic that the opponent was supposed to search all possible databases in all possible languages. The EPO had also not retrieved these patent documents. Finally, since D9 and D10 were highly relevant for the patentability issue of the claimed subject-matter, they had to be admitted.
1.3 The board notes that the sole reason provided by the patentee for rejecting the appeal as being inadmissible was based on the fact that the opponent's statement of grounds of appeal had exclusively been based on newly cited documents D9 and D10 which should not be admitted into the proceedings.
Following the established case law of the boards of appeal, the board considers that late-filed documents, as long as there is no abuse of procedure by the opponent, may be admitted into the proceedings if they are prima facie sufficiently relevant for questioning the maintenance of the patent (see e.g. decisions T 1019/92, point 2.2 of the reasons; T 671/03, point 2.2 of the reasons; T 1029/05, point 2 of the reasons).
1.3.1 Abuse of procedure
The board acknowledges that D9 and D10 could in principle have been retrieved within the nine-month opposition period. This, however, is not the issue at stake, but rather whether the late filing of the documents constitutes an abuse of procedure. Concerning this aspect, the board is satisfied that the opponent provided a reasonable justification why D9 and D10 were not filed during the nine-month opposition period: these documents are Japanese utility models having no English abstract and were found by the opponent only by chance after discussing the appealed decision with one of its Japanese clients. Documents D9 and D10 were filed at the earliest possible point in time of the appeal proceedings, i.e. with the statement of grounds of appeal. The board sees no indication that the opponent deliberately withheld D9 and D10 for tactical reasons.
1.3.2 Relevance of D9 and D10
Both D9 and D10 relate to the same technical field as the present invention, i.e preparation of histological samples, deal with the same technical problem, i.e. how to clean tissue cassettes from excess embedding medium and even disclose the same solution to the problem, i.e. sliding the cassette over a heated plate. Therefore, the board is convinced that D9 and D10 are highly relevant with regard to the patentability of the claimed subject-matter.
1.3.3 For the above reasons, the board decides to exercise its discretion pursuant to Article 12(4) RPBA to admit D9 and D10 into the proceedings.
Since the sole reason substantiating the patentee's request to hold the appeal to be inadmissible is not found convincing by the board, and since the board sees no other reason for holding the appeal inadmissible, the appeal is admissible.
2. Main request
2.1 Admissibility
2.1.1 The opponent stated that receiving from the patentee a letter of approximately 90 pages, including a new main request and new first and second auxiliary requests, just a few days before the oral proceedings represented an unfair behaviour of the patentee and justified a restrictive handling of the RPBA when deciding the admissibility of the claim requests. Moreover, the amended feature of claim 1 "... to melt the excess embedding medium ..." introduced a new problem since it contained added subject-matter. Therefore, the main request should not be admitted into the proceedings.
2.1.2 The patentee argued that present claim 1 was identical to claim 1 as filed with its letter of reply to the opponent's statement of grounds of appeal. The subject-matter of present claim 1 represented a limitation of the subject-matter of claim 1 underlying the appealed decision. The basis for the amended feature could be found on page 4, line 28 to page 5, line 5 of the application as filed. Finally, the term "excess" did not represent added subject-matter since it had a basis in original claim 1.
2.1.3 Acknowledging that filing a submission with a large amount of pages and new claim requests shortly before the oral proceedings should in principle be avoided by any party, the board nevertheless decides that the main request is admitted into the proceedings for the reasons given by the patentee.
(...)
3. Admissibility of the first auxiliary request
3.1 The first auxiliary request is not admitted into the proceedings pursuant to Article 13(1) and (3) RPBA.
Claim 1 of the first auxiliary request has been received by the EPO on 23 June 2017, i.e. shortly before the oral proceedings held on 29 June 2017, contrary to the requirement of Article 12(2) RPBA, according to which the patentee had to present its complete case with the reply to the opponent's statement of grounds of appeal. No valid reason, such as the filing of new evidence by the opponent, is apparent for the late filing of the first auxiliary request.
Claim 1 of the first auxiliary request comprises the additional feature, taken from the description, that the plate is heated in the range of 60°C to 90°C. D9 does not explicitly disclose this feature. However, the board is of the view that it lacks prima facie an inventive step (Article 56 EPC 1973). Indeed, D9 teaches to heat the plate at a temperature sufficient to melt the embedding medium. Therefore, depending on the actually used embedding medium, the skilled person would necessarily heat the plate at a temperature above the melting point of the actually used embedding medium. In particular, if the embedding medium had a melting temperature in the range of 60° to 90°C, the skilled person would adapt the heating elements of D9 so as to heat the plate in the range of 60°C to 90°C.
But even if the embedding medium had a melting point below 60°C, the board considers it obvious for the skilled person to increase the temperature of the grooved plate above 60°C in order to solve the problem of rendering the removal of the excess embedding medium formed on the exterior walls of the cassette more efficient. It appears obvious, indeed, that the higher the temperature of the grooved plate, the more efficiently and the faster the excess embedding medium is melted away from the exterior walls of the cassette.
3.2 The patentee argued that the new feature was already implicitly present in the feature of claim 1 of the main request "... temperature sufficient to melt the excess embedding medium". The patentee further noted that the present oral proceedings were the last chance to obtain a patent for its invention. Moreover, the new feature was already present in claim 2 of the main request filed with the patentee's reply to the grounds of appeal. Concerning inventive step, the patentee argued along the lines of its argumentation for the main request.
In view of the discretion not to admit late-filed amendments given to the board under Article 13(1) and (3) RPBA, the board does not find these arguments convincing. As noted by the opponent, the amendment originates from the description and it was not foreseeable that the feature of claim 2 of the main request filed with the reply to the grounds of appeal would effectively be introduced in claim 1. Concerning inventive step, the patentee did not present new arguments additional to those already discussed with respect to claim 1 of the main request.
3.3 Since the subject-matter of claim 1 is late-filed and prima facie not inventive over D9, the board, in view of the current state of the proceedings and the need for procedural economy, exercises its discretion pursuant to Article 13(1) and (3) RPBA not to admit the first auxiliary request into the proceedings.
4. Admissibility of the second auxiliary request
(...)
5. Apportionment of costs
5.1 The patentee requested for the first time with letter of 21 June 2017 the full refund of its costs in accordance with Article 16(1) and (2) RPBA, submitting that the late introduction of documents D9 and D10 only in the appeal proceedings constituted an abuse of procedure. The patentee reiterated its request during the oral proceedings without providing additional arguments.
5.2 Under Article 16(1) RPBA, it is at the discretion of the board to order, after request of a party, an apportionment of costs according to Article 16(2) RPBA and different from the principle that each party shall bear the costs it has incurred (see Article 104(1) EPC for the costs of opposition proceedings). Article 16, paragraph (1)(a) to (e), RPBA lists typical circumstances in which a divergent apportionment of costs is to be taken into account.
5.3 Circumstances according to Article 16, paragraph (1)(a) to (d), RPBA were not invoked by the patentee and are also not apparent. As to the alleged abuse of procedure pursuant to Article 16(1)(e) RPBA, the late filing of documents D9 and D10 by the appellant does not amount to such an abuse (see point 1.3.11.3.1 above).
5.4 As a result, the board, by exercising its discretion and after having carefully considered the relevant circumstances of the case, for the above-mentioned reasons does not see any persuasive grounds which would justify a departure from the normal rule that each party bears its own costs, and accordingly refuses the request of the patentee for an apportionment of costs.
(...)
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The patent is revoked.
3. The request for apportionment of costs is refused.
This decision T 0158/14 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:T015814.20170629. The file wrapper can be found here. Photo by vieleineinerhuelle obtained via Pixabay under Creative Commons CC0 (no changes).

T 1519/15 - Not so poisonous parent

Delta Patents Patent Law -

A 'family' of Amanita muscaria, which is best not eaten

This Examination Appeal shows the Board applying G 1/15 to what would otherwise have been a 'poisonous parent' situation. The outcome is as expected - the decision under appeal is set aside.

The Examination Division considered , pre-G 1/15, the situation as follows: claim 1 of the divisional application represents a generalization with respect to a species described in an earliest US priority document P1, and thus is, in accordance with the pre-G/15 legal situation, in its entirety entitled only to a later priority date from a US priority document P2. The EP parent application, which is cited as D3, also describes P1's species and is thus, at least in as far as pertaining to this species, entitled to the earliest priority date P1. D3 thus belongs, at least in as far as the described species, to the Art. 54(3) State of the Art of the divisional application and thus takes away the novelty of claim 1.

Reasons for the Decision
1. According to decision G 1/15, "entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of one or more generic expressions or otherwise (generic "OR"-claim) provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect."

2. Claim 1 of the present application includes the generic expressions

"a sensing circuit comprising at least first and second sensing capacitors", and

"at least one mimicking capacitor".

Claim 1 does not specify whether there are any transistors. It thus encompasses the specific embodiment of Figs. 4 to 6 of document D3, which embodiment is also disclosed in the present application, see the identical Figs. 4 to 6.

Since this embodiment is disclosed in P1 (see pages 19 to 21), claim 1 is entitled to the priority of P1 in respect of the specific embodiment. The remaining (general) subject-matter claimed, i.e. in particular a sensing circuit having a number other than four sensing capacitors, is not disclosed in P1 and only benefits from the priority date of P2. Figures 4 to 6 of D3 thus do not belong to the state of the art under Article 54(3) EPC for the specific embodiment with four sensing capacitors falling within the ambit of claim 1. As regards the remaining embodiments encompassed by claim 1, for example those with a number of capacitors other than four, figures 4 to 6 of D3 are not relevant to novelty under Article 54(3) EPC. The disclosure of D3 relating to a number of sensing capacitors other than four, see e.g. claim 1, moreover, is not entitled to the priority of P1.

3. It follows from the above that the decision under appeal is to be set aside.

4. As explained in the communication of 23 May 2017, and agreed upon by the appellant, the Board considers it appropriate to remit the case to the department of first instance for further prosecution (Article 111(1) EPC). The Board has noted the statement made in the communication of 31 May 2011 during examination proceedings, according to which claim 1 was not objected to under Article 56 EPC in view of the feature relating to the use of a mimicking capacitor. However, this is a statement made by the primary examiner and not by the Examining Division, and moreover formal requirements, such as the adaptation of the description, have not been yet subject of discussion.

This decision T 1519/15 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:T151915.20170803. The file wrapper can be found here. Photo "Fly Agaric...poisonous." by Bernard Spragg obtained via Flickr under Public Domain Mark 1.0.

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