2015 was a busy year for the EPO Boards of Appeal, with many decisions across various technical areas delivered. These included four G decisions from the Enlarged Board. Here we have provided a non-exhaustive overview of many of the decisions, including G decisions and T decisions with a distribution code of C (to board chairmen) or higher (to board member or even published in the Official Journal).
Decisions of the Enlarged Board of Appeal
As set out in our earlier article, the main decisions from the Enlarged Board this year concerned the sequels Broccoli II (G 2/13) and Tomatoes II (G 2/12). These decisions clarified that the exclusion to patentability for essentially biological processes for production of plants or animals does not apply to claims directed to plants, parts or products thereof. Product claims and product-by-process claims are therefore not affected by the exclusion of essentially biological processes from patentability. In particular, the Enlarged Board confirmed the concept previously elaborated in G 1/04 (on methods of diagnosis) that exclusions from patentability should be construed narrowly.
This year also saw confirmation from the Enlarged Board (in decision G 3/14) that the claims of a granted patent may be examined for clarity only when (and to the extent that) an amendment gives rise to an objection of lack of clarity.
In G 1/14, the Enlarged Board decided that a referral concerning remedies for late filing of an appeal was not admissible.
Decisions of the Technical Boards of Appeal
Admissibility
1. Is an appeal admissible if the wrong fee is
paid?
The appellant had impermissibly sought to take advantage of the
reduced appeal fee available for filing in a non-EPO language.
Since the appeal fee had not been paid in full within the time
limit, it was unclear whether there was an admissible appeal. The
Board held that the EPO had a duty to notify the appellant within a
reasonable time frame that the incorrect fee had been paid; for
whatever reason, this had not happened. In the absence of any
notification, the appellant was entitled to a legitimate
expectation that the fee payment was in good order and accordingly
the appeal was admissible. (T 595/11)
2. Is it possible to identify an unnamed
appellant?
The notice of appeal did not contain the name and address of the
appellant, as required by the EPC. The Board held that –
following G 1/12 – the issue is whether the appellant's
identity can be established on the basis of information in the
notice of appeal. Since the notice was filed by the representatives
of opponent 2, it was possible to identify the appellant as
opponent 2. The appeal was thus admissible. (T 1835/11)
3. Why are claims filed after receipt of the
summons not considered a response?
Following the issue of a summons to oral proceedings, the Board
sent out its preliminary opinion on the various matters to be
discussed. The appellant subsequently filed several new sets of
auxiliary requests. The Board held that the purpose of the
preliminary opinion is to establish the framework of the oral
proceedings and that it does not represent an invitation to file
further submissions. In the Board's view, there is no legal
basis for the filing of a 'response' to such a
communication and the Board is not obliged to take any such
'response' into account. The submissions were therefore
late-filed, and it was at the Board's discretion whether to
admit them into the proceedings. (T 1459/11)
4. Is an appeal admissible even if
the grounds of appeal do not challenge the decision?
The appellant did not challenge the reasoning of the Examining
Division, or provide any reasons why the decision under appeal was
wrong. The Board accordingly held that the reasoning in the grounds
of appeal was insufficient, which would usually mean that the
appeal has to be found inadmissible. However, the Board held that
the reasoning of the decision under appeal did not apply to at
least one of the claim requests filed by the appellant and that the
filing of this claim request overcame the reasons for refusal by
the Examining Division. The Board therefore held that the appeal
was admissible. (T 2001/14)
5. Under what circumstances is an
appellant not adversely affected by a decision?
The appeal lay against a decision of the Opposition Division to
refuse the main request for lack of novelty of claim 1. The Board
accepted that the patentees were adversely affected by this
decision, but noted that this decision was not contested. The Board
held that the new claim sets filed on appeal included amendments to
claim 2 and arguments as to why this claim 2 should be allowed.
Because the refusal of claim 1 by the Opposition Division was not
contested, the Board understood that the patentees were not
adversely affected by the decision and pointed out that claim 2 as
filed on appeal was not the subject of an individual request on
opposition. Accordingly, the Board's view was that the patentee
could not be regarded as adversely affected by the decision of the
Opposition Division and thus was not entitled to appeal the
decision. (T 327/13)
6. When will the Board override an exercise of
discretion?
During oral proceedings before the Examining Division, the
appellant presented auxiliary requests 1 and 2. The Examining
Division refused to admit the late-filed auxiliary requests under
Rule 137(3) EPC, citing that the request prima facie
lacked inventive step in light of D4, without substantiating the
arguments of lack of inventive step in light of this document. In
appeal, the Board noted that the Examining Division was correct in
that the auxiliary requests had been filed late, but that lateness
alone was not a sufficient reason for not admitting a request.
Neither was there sufficient reason to not admit the request based
on a broad statement of the request lacking inventive step without
substantiating the arguments. The Appeal Board considered that the
Examining Division did not apply the correct criteria in exercising
rule 137(3), thereby exceeding the proper limits of its discretion
(see G7/93, OJ EPO 1994, 775, reason 2.6). The Appeal Board
admitted the request, but found it lacking inventive step over
other documents. (T 1214/09)
7. Does declining to file new
requests at first instance preclude admission on
appeal?
The appellant filed several new requests with the grounds of
appeal. The respondent argued that the new requests should not be
admitted as they could have been filed during the opposition
proceedings and the appellant was asked at the end of the
opposition if he wished to file further requests but declined. The
respondent also argued that the requests raised new issues with
significant complexity. The Board held that whether the request at
issue could have been presented in the first instance proceedings
depended on whether the presenting party could have been expected
to present its request, which depended on the circumstances of the
specific case. The Board concluded that, in this case, the debate
in the opposition was not focused on one specific issue which
should have prompted the appellant to file the present main request
in the first-instance oral proceedings. As such, the Board admitted
the requests into proceedings. (T 1538/10)
8. Should late-filed documents be
admitted into opposition proceedings?
In first instance before the Opposition Division, the opponent
late-filed two prior art documents. Neither of the documents were
admitted as they were not considered prima facie relevant
by the Opposition Division. In appeal, the appellant (opponent)
argued that the Opposition Division erred in their decision, as the
reasons for rejection of the documents inferred an error in
understanding of the matter in the documents. The Appeal Board
confirmed the Opposition Division's decision to not admit the
document, as the minutes of the Opposition demonstrated that the
Opposition Division had considered the criterion correctly, that is
its prima facie relevance to the case, as they had
considered the contents of the prior art documents in detail,
however the facts had been presented. (T 1643/11)
9. What criteria should be
considered for admission of new claim requests on
appeal?
In an appeal against an opposition decision, a main request that
was not filed during opposition was deemed admissible as it related
to requests considered at the opposition and did not represent a
significant departure therefrom. The admitted request also
addressed the reasoning of the first instance with respect to the
granted claims. No evidence that the main request amounted to an
abuse or negligence was provided. As such, the main request was
admitted. An auxiliary request pursuing a different concept from
that developed in the main and first auxiliary request was denied
admission into proceedings as omission (by replacement) of features
from claim 1 was held to put the appellant (opponent) in a worse
situation. The Board considered it clear that filing this request
late in the proceedings effectively prevented the opponent as
respondent from submitting any substantive reaction to the request
in good time. (T 1267/10)
10. What are the limits of
reformulating the main claim(s) on appeal?
An auxiliary request filed only three days before oral proceedings
was considered to be inadmissible, as the request comprised an
extensive reformulation of claim 1, with sparse explanation for
basis, giving rise to a prima facie need for assessment of
added matter. The new request was also held not to contain
sufficient substantiation for inventive step. Admission would
therefore require an adjournment in order for the respondent to
respond. Thus the Board considered the new request not to be
procedurally efficient nor prima facie allowable and thus
it was refused admission into proceedings. (T 1104/11)
11. What criteria govern admission
of new documents into appeal proceedings?
The Board considered that the appellant had filed a large number
of documents but had not provided sufficient arguments and
information to make a case based on them as the grounds of appeal
did not properly explain why the documents provided showed that the
decision under appeal was incorrect. Requiring the Board to
identify the possibly relevant passages in the cited documents and
then knit them together to understand why the decision was wrong
was held to mean that the Board had to make the appellant's
case; this would be in breach of the principle of impartiality.
Therefore, the Board decided that the documents filed on appeal
were not admissible. The appellant filed further arguments based on
prior art that was not presented during opposition, even though it
could have been. The Board expressed the view that an appeal is
only an appeal against a decision of the department of first
instance, unless the prior art is prima facie relevant.
The Board considered that a decision based on newly submitted prior
art that was not prima facie relevant did not involve a
decision made by the department of first instance and could not be
admitted. (T 450/13)
12. Does an auxiliary request
need to be formally filed in order to be admitted?
The Examining Division at first instance refused to admit a third
auxiliary request into proceedings before the Examining Division
Board under Rule 137(3) EPC. The third auxiliary request was
presented as a combination of claims 1 and 19 as found in the
second auxiliary request, but no separate amended documents were
provided laying out the claims of the third auxiliary request, as
required by Rule 50 EPC. The Appeal Board affirmed the Examining
Division's decision and refused to enter the third auxiliary
request, as no formal amended documents had been submitted into
proceedings, despite many opportunities to do so. (T 1480/12)
13. Is a new ground of opposition
allowable if the documents were submitted previously but not
substantiated?
An opposition was filed in which D1 to D16 were filed, but grounds
were only presented in relation to D4, 5, 7 and 11. On appeal, the
appellant (opponent) introduced new grounds based on lack of
novelty in respect of D5 and D14, inventive step in respect of the
combination of D1 and D10 or D17 and D18 (new documents submitted
on appeal) and D10. The Board noted that, throughout the
proceedings leading up to appeal, the opponent had consciously not
made use of the procedural opportunities to make such grounds. The
appellant should and could have made these submissions. As such,
the Board did not exercise its discretion under Art 12(4) RPBA in
favour of the appellant. The new objections were not taken into
consideration and the appeal ultimately failed. (T 167/11)
Procedural violations
1. Is a decision by the Board not to admit a new
document a violation of the right to be heard?
The appellant-opponent tried to admit a new document (E12) in
appeal proceedings, which the Board did not admit into proceedings
using its discretion under Art 114(2) EPC. The appellant-opponent
argued that this constituted a violation of the right to be heard
under Art 113(1) EPC. The Board held that it saw no violation of
the right to be heard: E12 was late filed and its admission was at
the discretion of the Board, ie it saw no absolute right of a party
to have late filed evidence considered fully. The Board considered
that this is not changed even if the evidence is filed in response
to unforeseeable developments in the procedure. (T 2541/11)
2. Can an accompanying person be
prevented from speaking at oral proceedings?
An accompanying person had been properly introduced in accordance
with the provisions of G 4/95 in the run-up to oral proceedings. On
the day of the oral proceedings, the Opposition Division refused to
let the accompanying person address the Division and refused to let
them communicate with the authorised representative they were
accompanying. The Board had to decide whether this was merely a
very strict but still correct exercise of discretion or whether
this amounted to a procedural violation. The Board held that the
refusal to permit the accompanying person to speak or even to
communicate with the authorised representative deprived the
representative of any support they might have hoped to receive. As
a result, the Board held that there was unequal treatment of the
adversarial parties and thus that there was an unfair trial.
Remittal of the case and reimbursement of the appeal fee were
ordered. (T 1027/13)
3. What counts as a reasoned
decision?
The appellant had presented detailed arguments at oral proceedings
before the Examining Division as to why a particular document was
not prior art. The decision refusing the application did not
address these arguments. The Board held that "reasoned
decisions should contain at least some reasoning on crucial points
of dispute in order to give the party concerned a fair idea of why
its submissions were not considered convincing and to enable it to
base its grounds of appeal on relevant issues." Consequently
the decision was held to provide incomplete and deficient
reasoning. Remittal of the case and reimbursement of the appeal fee
were ordered. (T 526/12)
4. Can an appellant request that
members of the Opposition Division be replaced?
The appeal was from a decision of the Opposition Division where
two members of the Opposition Division had also been part of the
Examining Division, which represented a substantial procedural
violation. The appellant requested that all members of the
Opposition Division should be replaced; the Board held however that
the procedural violation lay in the composition of the Opposition
Division, rather than actions taken by its members. The Board held
further that there was no evidence that the members of the
Opposition Division were acting in a partial manner and therefore
remitted the case but did not order that the Opposition Division be
completely replaced. (T 285/11)
5. What are the requirements for
declining to search a "notorious" claim?
The searching authority had asserted that it was not necessary to
cite documentary evidence of the prior art on the basis that all
features were so well known as to be "notorious." On
appeal, the Board found that the Examining Division had not used
its discretion correctly in refusing to admit a claim request in
which an amendment that was added to overcome a lack of technical
features objection was refused after an added matter objection. The
Board argued that the applicant should have the opportunity to
simply disagree with the Examining Division regarding the lack of
technical features. The Board also expressed the view that, where
the relevant search authority has stated that it is not necessary
to cite any documentary evidence of the prior art on the grounds
that all of the technical features of the claimed invention are
notorious, it is always incumbent upon the Examining Division to
consider whether an additional search is necessary. The criterion
to be applied is that if the invention as claimed contains at least
one technical feature which is not notorious, the application
should normally not be refused for lack of inventive step without
performing an additional search. (T 0359/11)
Postponement of proceedings
1. Can postponement of proceedings
be requested following a petition for review?
The appellant's objection of partiality against the chairman
of a Board of Appeal was declared admissible by the Board in
question as it was promptly filed and sufficient substantiation of
the objection was provided. The decision regarding the objection
was taken by an alternate composition of the Board; however, the
alternate composition dismissed the objection of partiality. The
appellant then filed a petition for review of this decision by the
Enlarged Board of Appeal and requested deferment of appeal
proceedings until their petition had been heard. The Board ruled
that the mechanism for a petition for review had no suspensive
effect and rejected the request for postponement. (T 1938/09)
2. Are there limits to
postponement of proceedings on the basis of illness?
Oral proceedings were postponed once on the grounds of serious
illness but not for a second time, as the Board held that the
appellant could have hired an attorney. An auxiliary request was
not admitted into proceedings, as it addressed an issue that had
been present since the start of the opposition proceedings in first
instance and could have been filed sooner. The auxiliary request in
question also raised new issues that were not addressed in first
instance and upon which the Board could not decide. (T 1246/10)
Apportionment of costs
1. What criteria govern
apportionment of costs?
The Board refused to apportion costs, even though the appellant
did not attend the oral proceedings in opposition with late notice
and filed new documents during appeal. The Board decided that these
actions were a legitimate response and do not justify the
apportionment of costs. In addition, no corresponding request for
apportionment was filed during opposition and the Board indicated
that they could only decide on appeals from decisions of the first
instance department. (T 1273/11)
Correction of errors
1. Can an error in the
identification of an appellant be corrected?
The patent was revoked during opposition proceedings. An appeal
was incorrectly filed on behalf of an entity associated with the
proprietor, rather than the proprietor themselves, and correction
of the appellant was requested. The question of whether or not such
correction was allowable, what kind of evidence would be required,
and whether any other remedies would be available were referred to
the Enlarged Board of Appeal, where it was decided (G 1/12) that
correction was available, depending on the facts of the case. Based
on this answer, the Board had to consider what the true intention
of the appellant was and on the evidence presented, decided that
the true intention was to file in the correct name. Thus the
correction was allowable and the appeal could be admitted. (T 445/08)
2. Is it possible to correct a
reference to a document incorporated by reference?
An application as filed contained a reference to a US patent
application to be incorporated by reference using a US
attorney's docket number rather than the official application
number. The appellant argued that a correction of an obvious error
should be allowed in order to change the reference to a
corresponding PCT application. The Board held that the reference to
a US application via the US attorney's docket number could be
interpreted as being a request for incorporation by reference in
the USA only and not for Europe, such that it was not clear to a
skilled person that there was an error. In any event, the Board
took the view that since the US application was not published at
the application date and that several PCT applications were filed
by the applicant on the same day, the proposed amendment was not
directly derivable from the application as filed and it was not
evident that nothing else could be intended other than what was
offered as the correction. As such, it was considered that the
EPO's criteria for correcting an error had not been met. (T 1436/12)
Re-establishment of rights
1. Can an appellant's rights
be re-established if documents were not filed in
error?
In appeal proceedings (appealing the Examining Division's
refusal of an application), the appellant's representative
electronically filed amended claims for first to third auxiliary
requests, and a covering letter. A separate document detailing the
grounds of appeal was not submitted in error. The representative
successfully argued that the cause of non-compliance was the
receipt of the Appeal Board's preliminary opinion, rather than
the electronic receipt of the documents submitted as the appeal, so
the application for re-establishment was within the two month
period. However, the representative was not considered to have
taken due care and attention in filing the appeal. The
re-establishment was thus rejected, and the appeal was dismissed as
it was considered inadmissible. (T 1101/14)
2. Was the duty of care met when
missing a deadline for appeal?
An appeal was filed late in response to a rejection of an
application by the Examining Division in oral proceedings.
Re-establishment of the time limit to file the notice of appeal and
submit the grounds of appeal were requested. In this case, the
appellant was a US attorney, who looked after all the deadlines and
responses, filing documents through a European representative. The
deadline was incorrectly entered on to the docketing system of the
US attorney, and through a sequence of errors, both deadlines
(filing the notice of appeal and submitting grounds) were missed.
Whilst the requests for re-establishment were considered filed in
time, the Board did not accept that the US attorney had
demonstrated that all due care had been taken with regards to
inputting the deadline onto their system. The appeal was dismissed.
(T 997/10)
Priority
1. Is the priority claim valid if
the priority document contains no claims?
The Examining Division refused an application as the priority
claim (to a US provisional application, containing a description
and no claims) was invalid, and D1 published in the priority
period. Under appeal, the Board considered the right to priority
under Art 87 EPC and decision G 2/98, which stated that the right
to priority is valid if the skilled person can derive the subject
matter of the claim directly and unambiguously, using common
general knowledge, from the previous application as a whole. The
Board confirmed that this is also applicable when the priority
document does not contain claims. Under review, the Board
considered that the priority claim was valid, thus D1 was no longer
prior art. The case was remitted back to the Examining Division for
further prosecution. (T 1437/10)
Added subject matter
1. Is the test for added subject
matter more lenient than that laid down in G2/10?
The application was refused before the Examining Division for
added subject matter under Art 123(2) EPC. The appellant
(applicant) argued under appeal that the test should be based on a
more lenient approach stated in the Examination Guidelines (H-IV,
2.3), namely that "the focus should be placed on what is
really disclosed to the skilled reader by the documents as filed as
directed to a technical audience". Since the Board of Appeal
is not bound by the Guidelines, the test remains that stated in
G2/10. (T 1363/12)
Extension of the scope of protection
1. How can a patentee avoid
inadvertent extension of protection when limiting a claim directed
to a range or class?
The claim as granted was directed to a broad list of possible
salts present in a quantity defined by a range. The amendment
offered on appeal limited the salts to two particular salts, but
the Board nevertheless had to consider whether this represented an
extension of protection. The Board noted that this objection is a
common pitfall in cases where (despite the apparent limitation due
to deletion of some members of the class or list of compounds) the
claim as amended may no longer require the deleted compound(s) to
be present within a defined range, as they were in the granted
claims. The Board held in this instance, however, that the
amendment provided by the patentee still retained the limitations
of the granted claim and thus there was no extension of protection.
The Board provided some general guidance on principles to be
considered in such cases. (T 1360/11)
Sufficiency of disclosure
1. Should an application be
rejected if the recited invention is incapable of achieving a
stated effect?
The Examining Division refused the patent application on the basis
that claim 1 of the main and auxiliary requests did not make it
clear which feature was necessary in order to achieve the stated
technical effects. As such the claims did not recite the features
essential for the definition of the invention. On appeal, the Board
affirmed the decision in G1/03 (OJ, 2004, 413), stating that an
objection of insufficient disclosure (Article 83 EPC) cannot
legitimately be based on an argument that the application would not
enable a skilled person to achieve a non-claimed technical effect.
The Appeal Board also decided that the Examining Division was wrong
to conclude that the claim failed to meet the requirements of
Article 84 (ie that it did not recite all the features essential
for the definition of the invention), since there was no basis for
arguing that certain features were necessary to achieve certain
effects – one of many were essential to the definition of the
invention. The case was passed back to the Examining Division for
examination. (T 2001/12)
2. Is a deposit of a microorganism
with a national depository under national law sufficient for
disclosure under the EPC?
A PCT application disclosed a microorganism deposited with the
Japanese International Patent Organism Depositary (IPOD). A request
under the Budapest Treaty to convert this Japanese national deposit
to an international deposit was made after the filing date of the
PCT application but before European National Phase entry. The Board
took the view that the EPC required that the subject matter claimed
be disclosed in a manner sufficiently clear and complete for it to
be carried out by a person skilled in the art. This requirement in
the Board's view, included a sufficient disclosure of any
microorganisms, and must be complied with as from the date of
filing of the European patent application. A domestic deposit,
albeit with an institution recognised under the Budapest Treaty,
only becomes a "Budapest" deposit once the domestic
deposit has been converted. If conversion equals sufficient
disclosure, it is standard case law that this requirement must be
fulfilled at the filing date. If the applicant did not use the
provisions of the Budapest treaty then the requirement was to
convince the Board that Rule 28 EPC 1973, when read on its own,
allows the Board to apply the corresponding legal fiction that
exists under Japanese law. The Board in this case were not
convinced and refused the application for lack of sufficiency. (T 2068/11)
Inventive step
1. Does the closest prior art document need to
teach or at least suggest the technical problem to be
solved?
The appellant argued that previous decisions of the Boards of
Appeal (T686/91) and Case Law of the Boards of Appeal of the
European Patent Office, section I.D.5 required that it is
essential that the technical problem must be at least suggested in
the closest prior art document in order to avoid an ex-post
facto analysis. The Board disagreed and considered that it was
not essential that the closest prior art state or hint at the
technical problem and instead the closest prior art should be
decided by a two point test, namely (a) the closest prior art
should be related to the claimed invention and (b) the closest
prior art should disclose subject matter having the greatest number
of relevant technical features in common with the claimed
invention, ie requiring the minimum of structural and functional
modifications. (T 698/10)
2. Can statements in the
application as filed govern selection of the 'closest prior
art' for assessing inventive step?
The Board decided that the 'closest prior art' for
assessing inventive step is normally a prior art document
disclosing subject matter conceived for the same purpose as the
claimed invention and having the most relevant technical features
in common. Statements of purpose in the application as filed must
be read in conjunction with the claims. (T 2255/10)
Product by process claims
1. What test should be applied for
use of a product by process?
The appellant argued that a claim did not relate to a product by
process, but rather use of a product by process and as such, the
usual test for allowability of a product by process should not be
applied. However, the Board concluded that when considering the
definition of a product in terms of its production process the
principles developed in the jurisprudence for
"product-by-process claims" are also to be applied in the
case of a claim directed to the use of that product. (T 81/14)
Medical use claims
1. Can an independent
"Swiss-type" medical use claim (ie 'use of x in the
manufacture of a medicament for treatment of disease y') and an
independent second medical use claim (ie 'x for use in
treatment of disease y') coexist in the same
application?
The Board noted that decision G 2/08 had set a transitional period
within which the "Swiss-type" claim was still permissible
and that this period was still operative for the case at interest.
The Board also noted the previous decision T 1570/09 (in which a
set of claims having both claim formats was deemed unallowable),
but chose to depart from this earlier decision. The Board's
reasoning was (in part) that there was no material difference
between having the two claim formats in one set of claims
versus having two parallel applications, each having one
of the two formats. The Board accordingly chose not to object to
the presence of both claim formats within a single claim set. (T 1021/11)
2. Can a second medical use claim
in a divisional application be objected to for double patenting
over a granted parent patent having the equivalent
"Swiss-type" claim?
The Board accepted the principle of prohibiting double patenting,
citing G 1/05, but held (following T 1780/12 and T 879/12) that
second medical use claims are product claims, while
"Swiss-type" claims are process claims. On that basis,
the Board held that the subject matter covered by the two claims is
different and thus there is no issue of double patenting. (T 13/14 and T 15/14)
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
