J 0003/86 - Excusable isolated mistakes / restitutio - of 21.10.1986 - #76

Citation rank: 76
No. of citations: 64

J 3/86 had to decide on a request for restitutio in integrum (Art. 122) by an applicant who failed to timely pay the annuity fees for two of his European patent applications (in this case: two divisional applications).

The request for restitutio was not allowed at first instance, because the statement setting out the grounds of the non-payment was deemed insufficient ("... because of the circumstances arising from the arrangements for the payment of maintenance fees" between the representative's office and the Appellant).

The appellant, however, filed further statements, affidavits and arguments in support of his appeal against the first-instance decision.

The Board held that Article 122 was intended to ensure that loss of rights does not result from an isolated mistake in an otherwise satisfactory system; thus, an appellant or its representative must be able to demonstrate that a normally effective system for monitoring time limits prescribed by the EPC was established at the relevant time in the office in question.

The Board reconsidered the request and finally allowed restitutio.

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Headnote:

Article 122 EPC is intended to ensure that in appropriate cases the loss of substantive rights does not result from an isolated procedural mistake within a normally satisfactory system.

The full text of the decision can be found here.

G 0002/97 - "Good faith" - #77

Citation rank: 77
No. of citations: 63

G 2/97 looked at the general relationship between the EPO and parties. It found that the parties to proceedings before the EPO had a right to trust information received from the EPO during the procedure.

G 2/97 states:

"The protection of the legitimate expectations of users of the European patent system requires that such a user must not suffer a disadvantage as a result of having relied on erroneous information received from the EPO (J 2/87, OJ EPO 1988, 330, Motorola) or on a misleading communication (J 3/87, OJ EPO 1989, 3, Memtec)." (point 4.1 of the reasons)

According to G 2/97, if the protection of legitimate expectations requires the EPO to warn the applicant of any loss of rights, if such warning can be expected in all good faith, this requires that the deficiency can be readily identified within the framework of the normal handling of the case at the relevant stage of the proceedings and the party in question is in a position to correct it within the time limit.

The Enlarged Board of Appeal in G 2/97, however, saw no justification for the suggestion that the principle of good faith imposes on a board an obligation to warn a party of deficiencies within the area of the party’s own responsibility.

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Order:

The principle of good faith does not impose any obligation on the boards of appeal to notify an appellant that an appeal fee is missing in the circumstances mentioned in the question referred, ie when the notice of appeal is filed so early that the appellant could react and pay the fee in time, if there is no indication--either in the notice of appeal or in any other document filed in relation to the appeal--from which it could be inferred that the appellant would, without such notification, inadvertently miss the time-limit for payment of the appeal fee.

Click here for the full text of the decision.

T 0328/87 - Admissibility of opposition based on public prior use - #78

Citation rank: 78
No. of citations: 63

T 328/87 is concerned with the admissibility oppositions, which entirely rely on an alleged public prior use (Art. 100(a)). It defines the minimum amount of information, which has to be provided within the 9 months opposition period for the opposition to be admissible.

T 328/87 relied partly on the EPO Guidelines (nowadays GL G-IV, 7.2) and stated that the facts and evidence mentioned in Rule 55(c) EPC1973 (now Rule 76(2)(c)) as an admissibility criterion need to contain at least:

1. the the date on which the alleged use occurred, i.e. whether there was any instance of use before the relevant date (prior use);
2. what has been used, in order to determine the degree of similarity between the object used and the subject-matter of the European patent; and
3. all the circumstances relating to the use, in order to determine whether and to what extent it was made available to the public, as for example the place of use and the form of use. [...]. 

T 0291/00 referred to this as the „when, what and how“ criteria of T 328/87. Once the opposition is admissible, further evidence can be added, if needed.

In the opposition case underlying T 328/87 the opponent failed to submit within the opposition period any supporting evidence for the alleged manufacture and marketing in France of a top-loading washing-machine. Specifically, it lacked "any indication of evidence, such as sales catalogues, delivery notes, names and addresses of witnesses, etc." Consequently, the opposition was found inadmissible by the Board.

T 328/87 added that once an opposition is held inadmissible, there is no room for application of the principle of ex officio examination (Art. 114(1)). The reason for this being that there is in fact no procedure pending before the EPO to which the principle of ex officio examination could be applied (point 4 of the reasons).

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Headnote:

1. When an opposition is based on grounds of prior use, the requirements of Rule 55(c) EPC are only fulfilled if the notice of opposition indicates, within the opposition period, all the facts which make it possible to determine the date of prior use, what has been used, and the circumstances relating to the alleged use. The notice of opposition must also indicate the evidence and arguments presented in support of the grounds of opposition. However, Rule 55(c) EPC does not stipulate that the said facts, evidence and arguments have to be placed on file during the opposition period.
2. When an opposition has been declared inadmissible, its substance cannot be examined, nor is it possible for the EPO to examine the facts of its own motion in accordance with Article 114(1) EPC.

G 0001/04 (Diagnostic methods) of 16.12.2005 - #79

Citation rank: 79
No. of citations: 63

G 1/04 looked at the conditions, under which claims in the field of diagnostics are exempted from patentability under Art. 53(c) (Art. 52(4) EPC1973). Art. 53(c) holds that methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body are exempted from patentability.

G 1/04 took a liberal standpoint regarding the exclusion of diagnostic methods. It held that for a method to be excluded under Art. 53(c) for being a "diagnostic method", the method must include not only the steps of gathering medical data/information on the patient (so as to obtain a clinical picture), but also the mental act of attributing a disease to the observed clinical picture, i.e., the "diagnosis in strictu sensu". It is a strict requirement for the exclusion that the steps which serve to gathering medical data are "practised on the human or animal body".

Note: Diagnostic methods, according to G 1/04, are treated very differently than surgical methods. In G 1/07 the Enlarged Board of Appeals held that for surgical methods to fall under the exclusion of Art. 53(c), only a single step of the claimed method needs to be of surgical nature.

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Headnote:  

I. In order that the subject-matter of a claim relating to a diagnostic method practised on the human or animal body falls under the prohibition of Article 52(4) EPC, the claim is to include the features relating to:
(i) the diagnosis for curative purposes stricto sensu representing the deductive medical or veterinary decision phase as a purely intellectual exercise,
(ii) the preceding steps which are constitutive for making that diagnosis, and
(iii) the specific interactions with the human or animal body which occur when carrying those out among these preceding steps which are of a technical nature.
II. Whether or not a method is a diagnostic method within the meaning of Article 52(4) EPC may neither depend on the participation of a medical or veterinary practitioner, by being present or by bearing the responsibility, nor on the fact that all method steps can also, or only, be practised by medical or technical support staff, the patient himself or herself or an automated system. Moreover, no distinction is to be made in this context between essential method steps having diagnostic character and non-essential method steps lacking it.
III. In a diagnostic method under Article 52(4) EPC, the method steps of a technical nature belonging to the preceding steps which are constitutive for making the diagnosis for curative purposes stricto sensu must satisfy the criterion "practised on the human or animal body".
IV. Article 52(4) EPC does not require a specific type and intensity of interaction with the human or animal body; a preceding step of a technical nature thus satisfies the criterion "practised on the human or animal body" if its performance implies any interaction with the human or animal body, necessitating the presence of the latter.

T 0002/81 - Combination of range with subrange (allowed) - #80

Citation rank: 80
No. of citations: 63

T 2/81 is concerned with the question of combining end points of originally disclosed numerical parameter ranges, and whether the resulting ranges can be used form amending claims (Art. 123(2)).

T 2/81 held:

"The disclosure of a quantitative range of values (e.g. for concentrations or temperatures) together with an included preferred narrower range also directly discloses the two possible part-ranges lying within the overall range on either side of the narrower range. Hence a simple combination of the preferred narrower range and one of these part-ranges is also unequivocally derivable and is supported by the disclosure." (Headnote 2)

It is hence part of the relatively liberal case law of the Boards of Appeal regarding the combination of end points of numerical parameter ranges.

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Headnote:

1. While it is inadmissible to combine unrelated or conflicting documents mosaically in order to deny inventive step, it is indeed permissible to consider various publications and information jointly to prove a prejudice or a general trend in the art pointing away from the invention.
2. The disclosure of a quantitative range of values (e.g. for concentrations or temperatures) together with an included preferred narrower range also directly discloses the two possible part-ranges lying within the overall range on either side of the narrower range. Hence a simple combination of the preferred narrower range and one of these part-ranges is also unequivocally derivable and is supported by the disclosure.

The full text of the decision can be found here.

J 0007/82 - Written decision must mention main arguments and facts - #81

Citation rank: 81
No. of citations: 62

J 7/82 is most often cited as holding that, in order for a decision to comply with the requirements of Art. 113(1) (right to be heard), the written decison must at least mention or summarise the main lines of arguments which were presented by the effected party in support of its position (pont 6 of the reasons; the Headnote deals with a different issue, see below).

Expressed differently, the right to be heard guarantees the right to have the relevant grounds fully taken into account in the written decision. In the case of a decision rejecting the opposition, the relevant grounds are: the ground(s) for opposition as well as facts, evidence (inter alia prior art documents), and arguments presented in support of these grounds for opposition. A failure to do so is considered a substantial violation of the right to be heard (T 1059/98, citing J 7/82).

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Headnote:

I. The provisions of Rule 78(2) EPC, last sentence, which deem postal notifications to have been made when despatch has taken place, do not apply in a case in which the receipt of a notification under Rule 69(1) EPC is relevant to the question when the cause of non-compliance with a time limit has been removed, for the purposes of Article 122 EPC. In such a case the significant date is the date of actual receipt by the applicant.
II. If a decision does not take into account arguments submitted by a party and is based on a ground on which the party had no opportunity to present his comments, this is a substantial procedural violation.
III. Reimbursement of the appeal fee may be ordered pursuant to Rule 67 EPC, even though reimbursement has not been applied for, if the conditions laid down in that rule are fulfilled.

The text of the decision can be found here.

T 0013/84 - Reformulation of the problem - #82

Citation Rank: 82
No. of citations: 62

The Board in T 13/84 clarified that it is permissible (and sometimes required) that the technical problem stated in the application is re-formulated upon prosecution.

An example for a situation where re-formulation of the technical problem is appropriate is where new prior art is identified during search, and the applicant was not aware of that prior art when drafting the application.

Regarding the conditions under which re-formulation of the problem is admitted in view of Art. 123(2) EPC, T 13/84 stated:

A reformulation of the problem which then may become necessary is not precluded by Article 123(2) EPC if the problem could be deduced by the person skilled in the art from the application as filed when considered in the light of the prior art which is nearest to the invention.

The technical problem can thus be reformulated in view of the problem objectively solved by the features differentiating the invention from the closest prior art.

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Headnote:

1. The nature of the technical problem solved by the invention has to be determined on the basis of objectively established facts, in particular as appearing in the prior art revealed in the course of the proceedings, which may be different from the prior art of which the applicant was actually aware at the time the application was filed. A reformulation of the problem which then may become necessary is not precluded by Article 123(2) EPC if the problem could be deduced by the person skilled in the art from the application as filed when considered in the light of the prior art which is nearest to the invention.
2. Where a two-part form of claim is used the apparatus or process constituting the prior art which is nearest to the invention will in compliance with Rule 29(1)(a) EPC have to figure in the preamble of the claim, stating such features of it as are necessary for the definition of the claimed subject-matter and which are, in combination, already part of this prior art.

The full text of the decision can be found here.

T 0326/87 - Late filing of evidence in opposition/appeal results in apportionment of costs - #83

Citation rank: 83
No. of citations: 61
 

T 326/87 was frequently cited in the years from its publication in 1990 to 2008. Then, it seems to have run out of fashion. It was not cited by other Boards from 2009 onwards.

The reasons for the loss of popularity are not immediately apparent. It deals with an issue of ever-increasing relevance: late filing of evidence in opposition/appeal proceedings. T 326/87 is still referred to in the introductory portion of the chapter on late-filing in opposition/appeal proceedings in the EPO Case Law Book (ed. 2016, IV.C.1.3).

In the opposition case underlying T 326/87 the opposition was initially rejected. One of the opponents/appellant filed - together with its Grounds of Appeal - a further prior art document in support of its inventive step arguments. The Board considered whether such late-filed evidence should be admitted into the procedure.

The Board stressed that parties to oppositon and appeal procedures have a general duty to present evidence at an early stage in the procedure. Boards and Opposition Divisions have the discretion not to admit late-filed evidence (reasons 2.1.2; Art. 114(2) EPC).

The Board stated that, if a late-filed document is sufficiently relevant for it to be admitted into the procedure, the case should normally be remitted - together with the new document - to the first instance (reasons 2.2).

The Board further held that the party that filed the evidence late should normally bear the additional costs incurred as a result of the late-filing, both its own costs and any additional cost incurred by the other party/parties (reasons 2.3).

In the specific case, the Board admitted the relevant late-filed document into the procedure. It found that the excuse presented by the opponent/appellant for filing the document late (the late-filed document being a patent document from the former GDR, and at the time not normally present in the available "manual search stock") was credible and acceptable. The Board nevertheless ordered that the opponent bears (only) 50% of the patentee's costs for the oral proceedings in appeal.

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Headnote:

1. The public's as well as the parties' interests require that opposition proceedings should be speedily concluded. This requirement clearly extends to appeal proceedings as well. Article 99(1) and Rule 55(c) EPC, read in the light of Rule 66 EPC, seek to ensure this by requiring the full presentation in the Notice of Opposition of the case that a patentee needs to meet in order to keep his patent in force (see paragraph 2.1.1 of the Reasons for the Decision).
2. Matter, e.g. facts and evidence, submitted for the first time in appeal proceedings may be disregarded by the Boards of Appeal as a matter of discretion and pursuant to Article 114(2) EPC, which sets the legal limit upon the inquisitorial duties of the Board under Article 114(1) EPC (see paragraph 2.1.2 of the Reasons for the Decision).
3. If the evidential weight of late-filed documents in relation to those already in the case ("their relevance") warrants their admission into the proceedings, the case should normally be remitted to the first instance (Article 111(1) EPC), particularly if the late-filed material puts the maintenance of the patent at risk (see paragraph 2.2 of the Reasons for the Decision).
4. In such a case, costs between the parties should be apportioned under Article 104 and Rule 63(1) EPC, in such a way that the late-filing party should normally bear all the additional costs caused by his tardiness (see paragraph 2.3 of the Reasons for the Decision).
5. Costs should only be shared between the parties if there exist strong mitigating circumstances for the late filing of facts, evidence or other matter (see final sentence of paragraph 2.3 and paragraph 5 of the Reasons for the Decision).

The text of the decision is available here.

G 0002/04 (Transfer of opposition/HOFFMANN-LA ROCHE) of 25.5.2005 - #84

Citation rank: 84
No. of citations: 61

G 2/04 deals with the question of whether and under which circumstances the procedural status of the opponent can be transferred.

In the referring appeal case, T 1091/02, two oppositions had been filed in the name of Akzo Nobel N.V and Vysis Inc., respectively. After rejection of the oppositions, an appeal had been filed in the name of bioMérieux B.V. It was submitted that bioMérieux B.V. now owned the diagnostic activities of Akzo Nobel N.V. in the interest of which the opposition was filed. As a precautionary measure, in case the appeal in the name of bioMérieux B.V was considered inadmissible, it was requested that the appeal be treated as being filed in the name of Akzo Nobel N.V.

The question arose, whether the appeal was admissible. The Board in T 1091/02 thought the situation was unclear and referred corresponding questions to the Enlarded Board of Appeals.

The Enlarged Board took the standpoint that, generally, the status as an opponent could not be freely transferred. This view was based on previous case law (i.a., G 3/97, T 659/92, T 670/95, T 298/97 cited). The Enlarged Board saw no reason to deviate from this position.

The Enlarged Board further specified that a "legal person who was a subsidiary of the opponent when the opposition was filed and who carries on the business to which the opposed patent relates cannot acquire the status as opponent if all its shares are assigned to another company." In the underlying case, this meant that the opponent status was not transferred from Akzo Nobel N.V. to bioMérieux B.V. when selling the subsidiary. It was a concous choice to file the original opposition in the name of Akzo Nobel N.V. and not in the name of the (then already existing) subsidiary. Since the opponent status did not transfer from Akzo Nobel N.V. to bioMérieux B.V., the appeal filed in the name of bioMérieux B.V. was in the name of the wrong person and thus inadmissible.

However, with a view to the auxiliary request of the appellant that the appeal be treated as being in the name of Akzo Nobel N.V, if the appeal was otherwise inadmissible, the Enlarged Board found that in such situations, where it is not clear in which name an appeal is to be filed, it is appropriate and admissible to file the appeal in the name of one of the candidate appellants, and - as an auxiliary request - in the name of the candidate.

The appeal was thus admissibly filed by Akzo Nobel N.V..

Remark:
The situation in G 4/88 was different, in that there the opposition was filed by a company in the interest of one of its business units, and the business unit had no legal personality at the time of filing the opposition. Hence, the opposition could not have been filed in the name of that business unit. Under these circumstances, the Enlarged Board found in G 4/88 that the opponent status could be transferred from the selling company to the receiving company, together with the business assets of that business unit, by analogy to the (accepted) transfer of opponent status way of universal succession in law.

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Order:

I. (a) The status as an opponent cannot be freely transferred.
(b) A legal person who was a subsidiary of the opponent when the opposition was filed and who carries on the business to which the opposed patent relates cannot acquire the status as opponent if all its shares are assigned to another company.
II. If, when filing an appeal, there is a justifiable legal uncertainty as to how the law is to be interpreted in respect of the question of who the correct party to the proceedings is, it is legitimate that the appeal is filed in the name of the person whom the person acting considers, according to his interpretation, to be the correct party, and at the same time, as an auxiliary request, in the name of a different person who might, according to another possible interpretation, also be considered the correct party to the proceedings.

The full text of the decision is accessible here.

T 0611/90 - Fresh case in appeal (allowed) - #85

Rank: 85
No. of citations: 60

The underlying opposition of appeal case T 611/90 was based on an alleged lack of novelty and inventive step vis-à-vis written state of the art. In the appeal, the appellant/opponent put forward grounds which were entirely based on a new line of attack, namely an alleged public prior use (Art. 54). The Board had to consider whether the appeal was admissible, since the factual grounds on which the patent was revoked by the opposition division were not addressed by the appellant in his statement of grounds of appeal.

The Board considered that the statement of grounds of appeal was still within the same legal and factual framework as the opposition proceedings (as considered necessary in decisions G 9/91 and G 10/91) since the fresh reasons presented in the statement of grounds of appeal (i.e., public prior use) were still within the same original ground for opposition (i.e., lack of novelty).

The Board, however, found it appropriate to refer the case back to first instance, because appeal proceedings should not become a mere continuation of first- instance proceedings.

In a somewhat similar case, T 1146/06 refers to T 0611/90 as follows:

"In the present case, the statement of grounds of appeal does not address in detail all the issues of the reasoning of the decision under appeal and the evidence on which that decision relies. Instead, it develops new arguments mainly based on document D5 filed for the first time on appeal. However, the arguments are based on the same grounds of opposition as those on which the opposition and the decision under appeal were based, namely lack of novelty and of inventive step. According to the established jurisprudence of the boards of appeal, an appeal based on a fresh case may be admissible when the grounds for opposition have remained the same (e.g. T 611/90, OJ EPO 1993, 50, Reasons, point 2; T 389/95, Reasons, point 1; T 708/95, Reasons, point 1.2; T 1029/05, Reasons, point 1.10; T 1082/05, Reasons, point 1.1 or T 1557/05, Reasons, point 1.2)." (T 1146/06, point 3.5 of the reasons)

In brief, grounds of appeal may be admissible despite the fact that they are based on entirely new lines of attack, as long as the new lines of attack remain under the same ground(s) of opposition in the sense of Art. 100(a), (b), (c) (and G 7/95). (In practice, however, it may still be safe to add a few lines relating to the attacks used in the original opposition, to avoid any discussion on the admissibility of the appeal.)

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Headnote:

1. Under Article 106(1) EPC, appeals lie from decisions rather than from the grounds of such decisions. Apart from other deficiencies, an appeal raising a case entirely different from that on which the decision under appeal was based is still admissible if it is based on the same opposition ground (point 2 of the Reasons).
2. If there is such an entirely different case, it may, subject to the other circumstances of the case, be inappropriate for an Appeal Board to deal itself with its allowability. The public's and the parties' interest in having the proceedings speedily concluded may then be overridden by the requirement that appeal proceedings should not become a mere continuation of first- instance proceedings (point 3 of the Reasons).
3. [...]

The full text of the decision can be found here.

T 0154/04 - Non-technical features do not contribute to novelty or inventive step - #86

Rank: 86
No. of citations: 59

This decision, T 154/04, developed a system of how to deal with a mix of technical and non-technical features in claims defining a computer-implemented invention. It has been cited at a relatively high frequency as of its publication in 2017.

In brief, T 154/04 held that the non-technical features in mixed-type computer-implemented invention claims cannot contribute to novelty or inventive step. Under point 15 of the reasons, the Board put it like this:

"15. From this distinction between the technical features and non-technical features ("merely mental in nature" in the citation above), it must be inferred that non-technical features to the extent that they do not interact with technical features to produce a technical effect cannot establish novelty or inventive step (see also the decisions cited in "Case Law of the Boards of Appeal of the European Patent Office", fifth edition, December 2006, European Patent Office 2006, chapter I.D.8.4).[...]"

Regarding the validity of the findings in T 154/04, the Enlarged Board of Appeals in G 8/03 stated under point 10.13.1 of the reasons:

"While it is not the task of the Enlarged Board in this Opinion to judge whether [the system of T 154/04] is correct, since none of the questions put relate directly to its use, it is evident from its frequent use in decisions of the Boards of Appeal that the list of "non-inventions" in Article 52(2) EPC can play a very important role in determining whether claimed subject-matter is inventive."

T 154/04 thus contributed significantly to developing the system under which the EPO nowadays deals with claims including a mix of technical and non-technical features, as set out in the current EPO Guidelines at G‑VII, 5.4.

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Headnote:

I. Methods of business research are excluded "as such" from patentability under Article 52(2)(c) and (3) EPC.
II. Gathering and evaluating data as part of a business research method do not convey technical character to the business research method if such steps do not contribute to the technical solution of a technical problem.

The full text of the decision can be found here.

T 0206/83 - Prior art disclosure must be enabled - #87

Rank: 87
No. of citatons: 59

In the case underlying T 206/83, the examining division found that claim 1 lacked novelty over an earlier patent application from the same applicant (Art. 54(3)).

The Board observed that it was no question that certain compounds individually disclosed in the earlier application fell under claim 1 of the patent in dispute. The Board stated that there was no dispute either that a compound disclosed in terms of its chemical structure can only be regarded as being "made available to the public" in the sense of Art. 54(2) EPC, if a reproducible method is described in the same document, or otherwise available to the skilled person through its common general knowledge. The prior art must include an enabling disclosure in the sense that the skilled person must be able to make the potentially novelty-desctroying compounds.

The earlier patent application, which disclosed compounds falling under claim 1, also included a method of making those prior art compounds from certain starting materials. It was however not described how the starting materials were made. The Board then went on to investigate whether the skilled person would nevertheless be able to make the starting materials using common general knowledge. The same standards were applied as for the assessment of sufficiency of disclosure (Art. 83 EPC). The Board concluded in the end that more than common general knowledge was needed to make the starting materials, and thus also the claimed compounds which represented the potentially novelty-destroying disclosure. Consequently, disclosure of those compounds without disclosing a method of making them did not destroy novelty of claim 1.

T 206/83 is therefore most often cited for its statement that for the disclosure of a prior art document to be novelty-destroying, the disclosure of that prior art document must be enabled.

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Headnote:

A document (in this case a co-pending European application) does not effectively disclose a chemical compound, even though it states the structure and the steps by which it is produced, if the skilled person is unable to find out from the document or from common general knowledge how to obtain the required starting materials or intermediates. Information which can only be obtained after a comprehensive search is not to be regarded as part of common general knowledge.

 The decision text can be accessed here.

T 0213/85 - Grounds of appeal must address the contested decision - #88

Citation rank: 88
No. of citations: 59

In T 213/85 the opponent II failed to substantiate both his request for revocation of the patent in the Notice of Opposition, as well as his appeal against the first-instance decision holding the opposition inadmissible.

Already the rejection of the Opponent II's opposition as inadmissible was based on the fact that, when disputing novelty, the opponent did not properly substantiate his request. He did not demonstrate, within the opposition period, that the subject of the patent and the state of the art were identical, so that observations thereon could finally be made. From the filed evidence it was not possible to recognise any relationship between the product as claimed and the product therein described. In particular, it could not be deduced that they were identical.

The Notice and Grounds of Appeal suffered from a somewhat similar deficiency: it lacked substantiation in that the Grounds did not address the question as to why the contested decision was incorrect. Arguments were only provided as to why the documents and evidence on file were indeed novelty destroying.

Regarding admissibility of the appeal, the Board pointed out that it was established case law that grounds of appeal must be analysed in detail vis-à-vis the main reasons given for the contested decision. The grounds of appeal must specify the legal or factual reasons why the impugned decision should be set aside. The arguments must be clearly and concisely presented to enable the board (and the other party) to understand immediately why the decision is incorrect, and on which facts the appellant bases its arguments, without first having to make investigations on their own.

Since the Notice and Grounds of Appeal in the case at hand did not explain the reasons why the opposition decision holding the opposition as inadmissible was wrong. Consequently, also the appeal was inadmissible.

Comment:
While it is certainly useful to require the appellant to provide arguments as to why the first-instance decision was wrong, I always found this requirement to be in conflict with the possibility of the appellant to pursue in appeal amended claims. In my view, filing amended claims in appeal (i.e., not defending the claims held unallowable in the first-instance decision) amounts to tacidly acknowledging that the first-instance decision was correct. Nevertheless, entering appeal proceedings with amended claims, or amending claims at the appeal stage, is normally allowed.

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Headnote:

If an opposition has been dismissed on the grounds of insufficient substantiation and the grounds for appeal merely dispute patentability without elaborating on the admissibility of the opposition, the appeal is inadmissible for lack of adequate substantiation (in connection with T 220/83, "Grounds for appeal/Hüls", OJ EPO 1986, p. 249).

The full text of the decision can be accessed here.

T 0014/83 - Non-working embodiments not necessarily mean insufficient disclosure - #89

Rank: 89
No. of citations: 59

T 14/83 is concerned with sufficiency of disclosure. It is often cited for its ruling that sufficiency of disclosure is not to be judged on the basis of the claims alone, but that the description and drawings need to be taken into account. For example, T 291/89 cites T 14/83 as follows:

"As regards sufficiency of disclosure the Board wishes to point out that this question has to be judged not merely on the basis of claims but also on the basis of the description: cf. decision T 14/83, OJ EPO 1984, 105."

In more specific cases, T 14/83 is cited for saying that it is not necessarily detrimental to sufficiency of disclosure, if some of the examples given in a patent/application fail, although these examples are carried within parameter ranges defined in the claim in question. Occasional failure is not detrimental, if it takes e.g. only takes some additional experiments to convert failure to success, as long as these experiments do not involve inventive step. For example, T 583/93 states (in the original language):

"Wie in T 14/83 (ABl. EPA 1984, 105) festgestellt wurde, beeinträchtigt das gelegentliche Mißlingen eines beanspruchten Verfahrens nicht dessen Ausführbarkeit im Sinne des Artikels 83 EPÜ, wenn es z. B. nur einiger Versuche bedarf, um den Fehlschlag in einen Erfolg zu verwandeln; diese Versuche müssen sich allerdings in vertretbaren Grenzen halten und dürfen keine erfinderische Tätigkeit erfordern (Entscheidungsgründe Nr. 6, 1. Absatz)."

In the case underlying T 14/83, the claim at issue related to a polymerisation process in which a monomer is polymerised with a multifunctional co-monomer, wherein the resulting prolymer product has a "gel content" of 10-80% and a "polymerisation degree" of greater than 1000. The claim also defined ranges for two process parameters, namely the reaction temperature (0-50°C) and the "amount of polyfunctional co-monomer" (0.01-10%).

From various examples in the description it followed that even if the temperature and the "amount of the polyfuctional co-monomer" were held in the claimed ranges, the resulting product did not in all cases fulfill the claimed product requirements in terms of "gel content" and "polymerisation degree". The examination division, in the contested decision, was of the opinion that this resulted in a lack of sufficiency (Art. 83 EPC).

The Board, however, found that one should not judge claim 1 solely on the basis of its own wording, but one should take the content of the entire application into account (see above). In particular, the Board found that Tables 1 and 2 (which contained process parameters and resulting product properties) should have been taken into account. After making a very detailed analysis  of the numbers given in Tables 1 and 2, the Board concluded that the skilled person could deduce certain rules, which rules would then allow the skilled person to purposefully modify process parameters so as to convert failure to success, i.e., make products having the claimed properties.

Specifically, the Board in T 14/83 states in the Reasons:

"7. The resins obtained in runs 8, 13 and 14 present too low a gel content. The practical rules set out above offer the expert two correcting measures therefor: (i) increase of the amount of the polyfunctional comonomer as the result of which the polymerization degree of the "soluble fraction" declines, or (ii) decrease of the polymerization temperature whereby the "polymerization degree" goes up. According to what is wanted the polymerization degree can be simultaneously affected in contrary directions. The matter is similar in the runs No. 17 and 18 where the soluble fraction of the resin has too low an average polymerization degree. To redress this undesired result two possibilities also exist: (iii) diminishing the amount of the polyfunctional comonomer whereby the gel content declines consequentially, or (iv) decreasing the temperarature, which entails a consequential increase of the gel content. Finally, run 12 shows that the resin presents too high a gel content and too low an average polymerization degree of the soluble fraction. In that case only one remedy can be applied to correct the result. Operating as set out in case (iii) above will diminish the gel content and simultaneously increase the polymerization degree. In conclusion, it is clear that the expert who carried out the claimed processes strictly in accordance with the instructions and occasionally missed the desired target at the first attempt would be able to bring about the desired composition of the resin quickly and reliably by having recourse to the said empirical rules disclosed in the description of the present specification."

Based on this analysis, the Board concluded that the skilled person had sufficient guidance to successfully perform the invention, and that the claimed polymerisation method was thus sufficiently disclosed.

By way of a comment, it seems to me that T 14/83 puts a limit on a different concept developed by Appeal Boards, namely the "over-the-whole-area-claimed" concept, according to which sufficiency of disclosure is only present, if the invention can be performed over the whole area claimed (Case Law Book II.C.4.4). This concept, however, has always been in conflict with a further concept developed by the Boards, namely the concept of (at least) "one way of carrying out the invention" being sufficient to fulfill the requirement of Art. 83 EPC (CLB II.C.4.2). (I must confess that I never really understood when which of the two concepts is to be applied.)

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Headnotes:

1. The question whether an invention has been disclosed sufficiently clearly and completely is not to be decided solely on the basis of the content of the claims. If a chemical invention involves the task of manufacturing a product with certain measurable properties (e.g. gel content or degree of polymerisation of a copolymer), and this task is performed by means of a process involving several variables, then the means of its performance are to be regarded as sufficiently disclosed within the meaning of Article 83 EPC if, encountering occasional lack of success notwithstanding strict adherence to the prescribed limits of those variables, clear information, contained in the description, regarding the effects of individual variables on the properties of the product enables the person skilled in the art to bring about the desired properties quickly and reliably in such an event.
2. If teaching thus disclosed cannot be defined in a claim precisely enough to rule out occasional failure, such a claim is not to be objected to, provided it is possible to deduce from the description the action to be taken - which also cannot be precisely defined - by way of fine tuning of the variables.

* * *

T 0063/86 (Consent for amendments) of 10.8.1987 - #90

Rank: 90
No. of citations: 58

T 63/86 deals with the appeal procedure. It is concerned with the question to what extent are amendments to the claims allowed together with the Notice or Grounds of Appeal.

In the case at hand notice of appeal was filed together with a new set of Claims 1 to 16, which were described as "replacing all claims on file". The new claim 1 did not appear to correspond to any particular combination of the claims previously filed.

The Board noted that the applicant/appellant did no longer wish to pursue the claims that led to the refusal . Regarding the question whether or not to admit such amendments at the appeal stage, the Board stated:

"[A]mendment of the claims of an application at the [...] stage of examination is a matter of discretion governed by the final sentence of Rule 86(3) EPC [now: R. 137(3) EPC], which states "No further amendment may be made without the consent of the Examining Division", that is, no further amendment without such consent after the opportunity to amend in reply to the first communication of the Examining Division has passed. Thus, the fact that an appeal has been filed does not give the patent proprietor any right to amend his application as part of the appeal proceedings."

The Board thus found that a Board is not obliged to admit further amendments. They noted that Art.111(1)  EPC1973 allowed them to "exercise any power within the competence of the department which was responsible for the decision appealed". They did not, however, go so far to not admit the claims and to thereby end the procedure. Instead they stated:

"In cases of minor amendments filed during the appeal, it may be appropriate for a Board of Appeal to exercise the discretion of the Examining Division under Rule 86(3) EPC [now: R. 137(3) EPC]. However, in a case such as the present, where substantial amendments have been proposed which require a substantial further examination in relation to both the formal and substantive requirements of the EPC, such further examination should be carried out, if at all, by the Examining Division as the first instance, only after the Examining Division has itself exercised its discretion under Rule 86(3) EPC. In this way, the applicant's right to appeal to a second instance is maintained, both in relation to the exercise of discretion under Rule 86(3) EPC, and (if such discretion is favourably exercised) in relation to the formal and substantive allowability of the amended claims." (point 2 of the reasons) 

Finally, the Board concluded that the case is to be remitted to the first instance to decide (i) whether the further amendments to the claims can be made under Rule 86(3) EPC1973 [R. 137(3) EPC]; and (ii) if such amendments can be made, whether such claims are allowable.


T 63/86 represents a rather liberal policy of the Boards towards late amendments to the claims. It seems as if an increased workload/pressure on the Boards has changed their policy towards late-filed amendments. Nowadays, late-filed claims are often simply not admitted. This may be a reason why T 63/86 has not been used or cited by other Boards from 2014 onwards.

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Headnote 1 and 2:

1. The amendment of claims during an appeal from a decision to refuse a European patent application is a matter of discretion under Rule 86(3) EPC, final sentence.
2. In a case where substantial amendments to the claims are proposed on appeal, which require substantial further examination, the case should be remitted to the Examining Division, so that such examination should be carried out, if at all, by the Examining Division after the latter has exercised its discretion under Rule 86(3) EPC, final sentence.

The full text of the decision can be found here.

G 0001/06 (Sequences of divisionals/SEIKO) of 28.6.2007 - #91

Rank: 91
No. of citations: 57

G 1/06 and G 1/05 together looked at the conditions under which divisional applications fulfill the requirements of Art. 76(1), which states, i.a., that a divisional application "may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed".

Both decisions were published in the same issue of the Official Journal (5/2008) and they both share the same Summary of Facts and Submissions, and the same Reasons. Only the Orders address different points: G 1/06 looked at the case of sequences of divisional applications (grandparent, parent, child), whereas G 1/05 was concerned with the question of whether deficiencies under Art. 76(1) can be corrected after filing.

G 1/06 is ruled that, in order for a divisional application in a sequence of divisional applications to be valid, non of its predecessors must go beyond the content of its respective parent application. Only if this premise is fulfilled, the last applicaton is a valid divisional application. More precisely, the Board said:

„it is a necessary and sufficient condition for a divisional application ... to comply with Article 76(1), second sentence, EPC that anything disclosed in that divisional application be directly and unambiguously derivable from what is disclosed in each of the preceding applications as filed“ (Order). 

The rationale behind the Order is that a valid divisional application can only be filed from a valid parent. Otherwise any breach of Art. 76(1) could be cured by filing a further divisonal which no longer contains the matter added over the parent in the previous generation.

Almost needless to say, regarding the application of Art. 123(2) to divisional applications, G 1/06 (and G 1/05) held that

„amendments to divisional applications are allowed under Article 123(2) EPC to the same extent as amendments of any other non-divisional applications ... a divisional application can be directed by amendment to aspects of the earlier application also disclosed in the divisional application as filed but not encompassed by the claims of the divisional application as filed“ (point 9.2 of the reasons).

The proper and safe way of filing sequences of divisionals after G 1/06 is therefore filing identical copies of the earliest application in each of the divisionals in the sequence of divisionals, or - if claim amendments are desired at the time of filing of the divisional application - by adding the claim wording of the earliest application (re-phrased in terms of "aspects"/"embodiments" instead of "claims") to the end of an otherwise identical description of the divisional application to be filed.

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Headword:

In the case of a sequence of applications consisting of a root (originating) application followed by divisional applications, each divided from its predecessor, it is a necessary and sufficient condition for a divisional application of that sequence to comply with Article 76(1), second sentence, EPC that anything disclosed in that divisional application be directly and unambiguously derivable from what is disclosed in each of the preceding applications as filed.

T 0609/02 - No second medical use claim based on speculation - #92

Rank: 92
No. of citations: 56

T 609/02 deals with second-medical-use claims and looks at how much experimental evidence is required to make the second-medical-use claim is sufficiently disclosed.

Second-medical-use claims seek to protect the use of known substances or compositions for a new medical purpose. Under the EPC1973 second-medical-use claims had to be formulated in the "Swiss-type" format ("use of compound X for the manufacture of a medicament against disease Y"). Under the EPC2000 the a purpose-limited-substance-claim format ("substance X for treating disease Y") must be used.

Since second-medical-use claims confer valuable protection for new pharmaceutical treatment schemes, and research in this area is expensive and slow, applicants tend to file speculative patent applications claiming a second-medical-use way before hard data of the respective substance in the specific medical indication claimed is available. Arguably, the invention is not ready at this point.

The Board in T 609/02 looked at the following claim:

"6. The use of a steroid hormone or steroid hormone analogue as identified by the method of claims 1 to 5, which fails to promote transcriptional activation of glucocorticoid receptor or retinoic acid receptor genes, for the preparation of a pharmaceutical for the treatment of AP-1 stimulated tumor formation, arthritis, asthma, allergies and rashes."

The Board noted correctly that the claim - on top of being a second-medical-use claim - was also in the controversial "reach-through claim" format (see EPO Guidelines F-III, 9). The "reach-through" issue, however, could be left aside, because the claim was not allowable for other reasons.

Specifically, the Board noted that the patent specification only described a study of the "interplay" between the steroid hormone/steroid hormone receptor complex regulating the transcription of steroid hormone-responsive genes and the AP-1 protein regulating the transcription of AP-1 responsive genes. The Board stated that the patent specification, however,

"... provides no evidence at all relating to the invention in claim 6: no steroid hormone is identified as binding to the hormone receptor in such a way that the so-formed complex will disrupt AP-1 stimulated transcription and at the same time fail to promote steroid hormone regulated transcription; no data of any kind are presented indicating that such an hormone (if it were identified) could have an impact on any of the listed specific diseases." (point 5 of the reasons)

Only later, the applicant provided post-published evidence showing that steroid hormones such as needed to carry out the use according to claim 6 were later structurally identified and that they, indeed, have an effect on AP-1 stimulated transcription. They argued that on the basis of the disclosures of these post-published documents, by carrying out the claimed invention, one would necessarily obtain pharmaceutical compositions since it was by following the teachings of the patent in suit that the post-published results had been obtained. Consequently, in the appellant's opinion, sufficiency of disclosure had to be acknowledged.

The Board disagreed. They stated:

"Sufficiency of disclosure must be satisfied at the effective date of the patent, ie on the basis of the information in the patent application together with the common general knowledge then available to the skilled person. Acknowledging sufficiency of disclosure on the basis of relevant technical information produced only after this date would lead to granting a patent for a technical teaching which was achieved, and, thus, for an invention which was made, at a date later than the effective date of the patent. The general principle that the extent of monopoly conferred by a patent should correspond to, and be justified by, the technical contribution to the art, has to be kept in mind (eg. decision T 409/91, OJ EPO 1994, 653)." (point 8 of the reasons)

In other words, sufficiency of disclosure is a requirement that must be fulfilled at the time of filing. No patent should be granted on the basis of mere speculation that a possible second-medical-use exists. Post-published evidence that the second-medical-use indeed exists cannot cure the fundamental deficiency of lack of sufficient disclosure.

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Headword:

If the description of a patent specification provides no more than a vague indication of a possible medical use for a chemical compound yet to be identified, later more detailed evidence cannot be used to remedy the fundamental insufficiency of disclosure of such subject-matter.

G 0001/84 - Opposition by the proprietor of the patent - overturned - #93

Rank: 93
No. of citations: 56

G 1/84 is not only one of the first G decisions ever, but it is also the only G decision ever to be overturned by another, namely by G 9/93.

G 1/84 held that "self opposition", i.e., an opposition filed by the proprietor against his own patent, was admissible.  The Enlarged Board found at that time that the motives of the opponent were in principle irrelevant. Otherwise the phrase "any person" in Art. 99 would have been rendered as "any person interested". The identity of the opponent was primarily of procedural importance.

G 9/93 looked at the issue again and found the opposite: opposition by the proprietor against its own patent is not allowed. The Enlarged Board found that opposition by the proprietor is against the general character of the opposition proceedings as established in G 9/91 and G 10/91, according to which the opposition procedure must be regarded as contentious proceedings between parties who normally represent opposing interests.

The case law established by G 1/84 on the question of self opposition is thus obsolete. G 9/93 should be followed.

Nevertheless, G 1/84 should be remembered, not at least for showing that even the Enlarged Board of Appeals sometimes gets it wrong ;-)

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Headnote:

"A  notice of  opposition  against a  European patent is not inadmissble merely because it has been filed by the proprietor of that patent." (overturned)

The full text of the decision can be accessed here.

T 0170/87 - Undisclosed disclaimers (prior to G 1/03, G 2/10, G 1/16) - #94

Citation rank: 94
No. of citations: 56

Before the Enlarged Board of Appeals dealt with disclosed and undisclosed disclaimers in G 1/03, G 2/10 and G 1/16, T 170/87 was frequently cited for establishing that undisclosed disclaimers were in principle admissible to establish novelty over prior art, but they must not establish inventive step.

For example, T 159/95 cites T 170/87 as follows:

"According to the established jurisprudence of the Boards of Appeal, it may be permissible to exclude a specific prior art from the claimed subject-matter by means of a disclaimer, even if the original application provides no basis for such an exclusion (see decisions T 170/87, OJ EPO 1989, 441, point 8.4.1 of the reasons; [...])"

Clearly, T 170/87 lost most of its significance when G 1/03 (at least up until G 2/10) clarified the situation around undisclosed disclaimers. This explains the steep drop in citations after G 1/03 came out. Today, of course, G 1/03 and G 1/16 should be referred to regarding admissibility of undisclosed disclaimers.

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Headnote:

1. A figure which serves only to give a schematic explanation of the principle of the subject-matter of the patent and not to represent it in every detail does not allow the sure conclusion that the disclosed teaching purposively excludes a feature not represented. Such a "negative" feature (here: "with no internal fittings") may not subsequently be incorporated into the claim.
2. A disclaimer can be used to make an inventive teaching which overlaps with the state of the art novel but it cannot make an obvious teaching inventive.

 The full text of the decision can be accessed here.

T 0278/00 - Decisions of the EPO must be properly reasoned - #95

Rank: 95
Number of citations: 55

T 278/00 is concerned with the requirement of the EPC that decisions of the EPO which are open to appeal should be reasoned and be accompanied by a written communication of the possibility of appeal (R 68(2) EPC1973, Rule 111(2) EPC).

In the underlying examination case, the application was refused for lack of inventive step and lack of unity, but the reasoning for the decision was such that "the Board had serious difficulties in attributing any meaning to the reasoning of the first instance on which the latter based the decision to refuse the application."

The Board recalled that the purpose of the requirement to provide a reasoned decision is to enable the Appellant and, in case of an appeal, also the Board of Appeal to examine whether the decison could be considered to be justified or not. The appellant or the Board should not be forced to speculate as to what might be the intended meaning of the decision.

In a situation as the one of the underlying case, where the decision is incomprehensible and falls short of revealing any legal reasoning that led to the decision, the question of whether such a decision fulfills the requirements of Rule 68(2) EPC1973/Rule 111(2) EPC requiring a decision to be reasoned. In this context, the Board stated:

For these reasons, in the Board's judgement, the decision under appeal which is based on such a deficient reasoning is not 'reasoned' in the sense of Rule 68(2) EPC. This failure amounts to a substantial procedural violation requiring the decision under appeal to be set aside and the case to be remitted to the first instance. The appeal is thus deemed to be allowable and the Board considers it to be equitable by reason of that substantial procedural violation to reimburse the appeal fee in the present case (Rule 67 EPC).

It is thus incumbent on the EPO's examining or opposition division to provide a comprehensible, reasoned decision.

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Headnote:

1. The reasoning of a decision under appeal must be taken as it stands. The requirements of Rule 68(2) EPC cannot be construed in such a way that in spite of the presence of unintelligible and therefore deficient reasoning, it is up to the Board or the Appellant to speculate as to what might be the intended meaning of it.
2. The Board must be in a position to assess on the basis of the reasoning given in the decision under appeal whether the conclusion drawn by the first instance was justified or not. This requirement is not satisfied when the Board is unable to decide which of the various inconsistent findings indicated in and justifying the decision under appeal is correct and which is false.
3. A decision of the European Patent Office open to appeal which is based on such a deficient reasoning is not 'reasoned' in the sense of Rule 68(2) EPC, which failure amounts to a substantial procedural violation.

The full text of the decision can be accessed here.

J 0022/86 (Disapproval) of 7.2.1987 - #96

Rank: 96
Number of citations: 55

T 22/86 deals with the question of how much reasoning is required for complying with Art. 108 EPC, so that the appeal is admissible.

In the case at hand, the applicant had failed to respond properly to a communication under Rule 51(4) EPC1973 (nowadays Rule 71(3) EPC) by paying the fees for grant and printing, and by filing a translation of the claims. The application was consequently refused.

Applicant filed a Notice of Appeal, which (in addition to setting out information as required by Rule 64 EPC) contained the following statement: "It is requested that the application be restored to enable further processing to be carried out with the object of securing the grant of a patent." The appeal fee was duly paid. No further statement was filed within the four month period provided by Article 108 EPC.

In a subsequent letter, the representative of the applicant argued that the above-quoted statement quite clearly represented the Grounds of Appeal and that the appeal therefore was admissible.

In considering whether the appeal complied with Art. 108 and thus was admissible, the Board stated:

"2. The requirement of Article 108 EPC for "a written statement setting out the grounds of appeal" is clearly in addition to the requirement for a "notice of appeal". The requirements for a notice of appeal are set out in Rule 64 EPC, and are essentially formal in nature. In contrast, the requirement for a written Statement "setting out the grounds of appeal" is clearly not merely formal, but involves a presentation of the Appellant's case. That this was intended by the Convention is also supported by the fact that an extra two months is allowed for the filing of the Statement. The requirement of Article 108 EPC is for a statement which sets out the substance of the Appellant's case; that is, the reasons why the appeal should be allowed and the decision under appeal should be set aside. [...]"

The Board remarked that, in general, the less reasoning that a statement of Grounds contains, the greater will be the risk that the appeal will be rejected as inadmissible for non-compliance with Article 108 EPC. They also stated that

"In a wholly exceptional case such as the present, it may be immediately apparent to the Board of Appeal upon reading the decision under appeal and the Statement of Grounds of Appeal that such decision cannot properly be supported, even though the grounds contained in such statement can fairly be described as minimal. This is the situation in the present case [...]"

As a consequence, despite the lack of proper reasoning as to why the contested decision was wrong, the Board regarded the appeal admissible.


As pointed out by the Board, a situation in which an appeal is admissible without a filing of proper Grounds of Appeal is very exceptional. Therefore, decision T J 22/86 is more often cited for laying down the minimum requirements regarding Grounds of Appeal for holding the respective appeal inadmissible. For example T 574/91 cites J 22/86 as follows:

"[...] according to the established jurisprudence of the Boards of appeal, it would have been essential that the Statement of Appeal set out the specific factual and legal reasons on which the Appellant relied (e.g. J 22/86, OJ 1987, 280 and T 432/88 of 15 June 1989, not published in the OJ EPO)." (quote from T 574/91).

The situation in which no Grounds of Appeal are filed and the appeal is nevertheless admissible must be regarded as being truly excpetional.

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Headnote I:

1. In order to comply with Article 108 EPC, the written statement setting out grounds of appeal should set out fully the reasons why the appeal should be allowed and the decision under appeal should be set aside. Exceptionally, where the written statement does not contain such full reasons, the requirement for admissibility may be regarded as satisfied if it is immediately apparent upon reading the decision under appeal and the written statement that the decision should be set aside.

The full text of the decision can be accessed here.

T 0608/07 - Ambiguities in the claim (sufficiency vs. clarity) - rank #97

Rank: 97
Number of citations: 55

This appeal against a decision of an opposition division in case deals with the question of whether and when difficulties in determining the scope of the claim, i.e., ambiguities, are to be regarded a clarity issue (not a ground of opposition) or as pointing towards insufficiency of disclosure (a ground of opposition, Art. 100(b)).

An earlier decision, T 256/87, held that - in order to be able to carry out an invention - the skilled person must know whether a certain embodiment "falls within the forbidden area of the claim" or not. Otherwise, the invention could not be carried out in a targeted manner.

Since then, T 256/87 has been used by opponents to interpret a clarity issues as a lack of sufficieny. Also the respondent/opponent in T 608/07 made a similar attack under Art. 100(b) against the claims at issue.

The claims in T 608/07 defined a polymerisation process, in which two "incompatible catalysts" were used. The description provided a definition of the term "incompatible catalyst", which was, i.a., based on a comparison of the average molecular weights of the polymers that were produced by each of the catalysts. The numerical value of the average molecular weight of a polymer, however, depends on how the average molecular weight is calculated. Specifically, it plays a significant role whether the weight average molecular weight (Mw) is used, or whether the number average molecular weight (Mn) is used. The opponent showed that using the number average mean molecular weight, two tested catalysts were to be regarded as "compatible", whereas using weight average molecular weight, the same two catalysts were "incompatible". The respondent/opponent argued that this resulted in a situation where the skilled person could not carry out the invention.

Under the specific circumstances of the case, the Board found that the skilled person would readily understand the expression "molecular weight" to mean weight average molecular weight. The alledged difficulty in deciding whether one operates "within the forbidden area of the claim" therefore did not exist.

However, the Board added a general statement on the "forbidden-area" concept of T 256/87. The Board stated:

"2.5.2 The issue of insufficiency dealt with in T 256/87 and the present case is an insufficiency which arises through ambiguity. Although the board accepts that, depending upon the circumstances, such an ambiguity may very well lead to an insufficiency objection, it should be born in mind that this ambiguity also relates to the scope of the claims, ie Article 84 EPC. Since, however, Article 84 EPC is in itself not a ground of opposition, care has to be taken that an insufficiency objection arising out of an ambiguity is not merely a hidden objection under Article 84 EPC. It is the conviction of this board that for an insufficiency arising out of ambiguity it is not enough to show that an ambiguity exists, eg at the edges of the claims. It will normally be necessary to show that the ambiguity deprives the person skilled in the art of the promise of the invention. It goes without saying that this delicate balance between Article 83 and 84 EPC has to be assessed on the merits of each individual case."

In other words, not in every case where there is ambiguity in the claims, this can be translated into insufficiency of disclosure. Only where the ambiguous feature concerns the core of the invention, as opposed to the "edges of the claims", then an objection under Art. 83/100(b) may be justified.

Since then, the question of whether ambiguity in the claims is a matter of clarity or sufficiency of disclosure had frequently been debated in opposition proceedings.

A recent decision (T 2290/12, mentioned in the EPO's 2017 Case Law Report, Suppl. Publ. 3 of the OJ) has summarised the debate and concluded that the "forbidden area" concept of T 256/87 has only been followed in four decisions, whereas the approach of T 608/07 was applied in more than 20 cases. The Board in T 2290/12 stated that the "forbidden area" concept "appeared to have been dropped".

The "forbidden area" concept, however, is not dead. In T 1914/11 the Board found that difficulties in determining the "transient pH in the mouth" of a subject resulted in insufficiency of disclosure. The patent was revoked under Art. 100(b). More recently, in T 626/14, difficulties in measuring the thickness of a "fluffy absorbent core", which was a parameter used to define the invention, rendered claim 1 insufficiently disclosed.

Generally, however, ambiguities in patent claims are nowadays more likely to be regarded a matter of clarity than insufficient disclosure.

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Headnote:

none

The full text of the decision can be found here.

T 0119/82 - Disadvantageous modification of the prior art ("Gelation") - #98

Rank: 98
Number of citations: 55

This appeal is against a decision of the examination division refusing European patent application 79 301 547.0. Although T 119/82 has not been cited in other BoA decisions in 2016 and 2017, its citation frequency was relatively stable over the past three decades.

Claim 1 was directed to a process for forming a polymeric solution or gel having a high viscosity. The process included a number of steps, i.a., the step of "adding 5 to 500 volume% water based on the volume of organic liquid plus polar cosolvent to a solution". It was clear that the added water was a by-product and did not have any advantageous effect on the polymeric solution or gel produced. The applicant, however, argued that the process differed from the prior art in that the prior art did not disclose the addition of water.

The claim was regarded by the Board to be an "analogy process" (see Case Law Book, chapter I.D.9.17). The Board recalled that analogy processes are patentable insofar as they provide a novel and inventive product. With respect to novelty of the composition produced by the process (of which the applcant claimed that it was novel by virtue of the [undesired] water present) the Board stated:

"The appellants have argued that the products obtained according to the claimed process are novel and not identical with those suggested in the state of the art, since there is also an aqueous phase present. It is evident, however, that the aqueous phase is inessential and useless, and should, even if entrapped in the gel, lessen the overall viscosity of the result. In larger amounts, it would even defeat the purpose of the exercise if left around the product and this is why the specification recommends its removal by conventional "liquid extraction" methods (page 4, line 2) which obviously mean appropriate separation techniques. Alternatively, the aqueous phase may be simply evaporated (page 2, line 36 to page 3 line 7, and claim 2). The temporary aggregation of a known article with functionally superfluous and unrelated other known components is representing a mere collocation of objects, which should not impart novelty to the same unless there are reasons to the contrary suggesting some further effect. An increased amount of an undesirable contaminant would not, for instance, render an old compound new. In the present context, the aqueous phase is a by-product of no technical relevance."

On the issue of inventive step of the process, the applicant also argued that the process would be inventive, because it would be so odd and the skilled person would be aware of the disadvatages. Here the Board states:

"16. The argument that alternative routes should be considered to be the less obvious the odder, or perhaps even the more disadvantageous, they are, cannot be sustained. The rhetorical question why the skilled man should have contemplated such detour at all, would equally apply, if someone tried to patent the least attractive further analogy processes for the making of a known compound. Obviousness is not only at hand when the skilled man would have seen all the advantages of acting in a certain manner but also when he could clearly see why he should not act in the suggested manner in view of its predictable disadvantages or absence of improvement, provided he was indeed correct in his assessment of all the consequences."

In summary, a solely disadvantageous modification of the prior art is not patentable.

T 119/82 is also frequently cited for its statement that, if a party relies on an alleged "prejudice in the art", which would keep the skilled person from going into the direction of the invention, then this party bears the onus of proof that the prejudice indeed exists (see Headnote III).

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Headnote:

I. The effect of a process manifests itself in the result, i.e. in the product in chemical cases, together with all its internal characteristics and the consequences of its history of origin, e.g. quality, yield and economic value. It is well established that analogy processes are patentable insofar as they provide a novel and inventive product. This is because all the features of the analogy process can only be derived from an effect which is as yet unknown and unsuspected (problem invention). If, on the other hand, the effect is wholly or partially known, e.g. the product is old or is a novel modification of an old structural part, the invention, i.e. the process or the intermediate therefor, should not merely consist of features which are already necessarily and readily derivable from the known part of the effect in an obvious manner having regard to the state of the art (cf. also "Cyclopropane/Bayer", T 65/82, OJ 8/1983,327).
II. Obviousness is not only at hand when the skilled man would have seen all the advantages of acting in a certain manner, but also when he could clearly see why he should not act in the suggested manner in view of its predictable disadvantages or absence of improvement, provided he was indeed correct in his assessment of all the consequences.
III. Appellants who wish to rely on a prejudice which might have diverted the skilled man away from the alleged invention have the onus of demonstrating the existence of such prejudice.

The full text of the decision can be found here.

T 0296/87 - Enantiomers - #99

Rank: 99
Number of citations: 55

This decision, ranking #99 on the list of the EPO's most-cited Board of Appeal decisions  deals, i.a., with the question whether an opponent, who filed restricted claims in the course of opposition proceedings, can subsequently file claims broader than the previous ones (but still within the limits of Art. 123(3), of course).

The decision also deals with the question of novelty of specific configurations of chemical compounds (e.g. enantiomers) over a more general disclosure of the chemical structure (e.g., racemates).

1. Broadening of claims during opposition

Regarding the issue of broadening the scope of the claims relative to a version of the claims previously filed in opposition, the Board in T 296/87 held:

"2.2 Moreover a Board of Appeal had already decided (T 123/85 of 23 February 1988, OJ EPO 1989, 336) that the EPC made no provision for a patentee to surrender his patent in opposition proceedings, which meant that (even had there been an express declaration of surrender, which was not the case) he could not surrender his patent either wholly or in part. He could only request that it be amended and, in principle, could withdraw or amend such a request at any time provided no abuse of procedural law was involved (cf. points 3.1.1 and 3.1.2 of the decision cited). In the present case there is nothing to indicate any such abuse; in fact the complexity of the subject-matter makes it understandable that the appellants should have been most unsure as to what form of limitation the EPO would accept for establishing novelty."

A later decision, T 368/98, uses these principles in the context of a broadening of claims relative to claims refused by the opposition division and cites T 296/87 as follows:

"2.3. Even if the amended claim were to be seen as broader than the claim refused by the opposition division, the board finds the amendment admissible under the case law, which allows broadening on appeal, unless it would constitute abuse of proceedings (see eg. decisions T 89/85 of 7 December 1987 and T 296/87, OJ EPO 1990, 195)."

In other words, by filing restricted claims in opposition division, the patentee does not surrender the scope no longer claimed by the restricted claims. He can re-claim that subject matter later, in a further attempt to formulate allowable claims (within the limits of Art. 123(3), of course)

 

2. Novelty of specific configurations of chemical compounds

The Board also had to decide on the issue of when a chemical substance is disclosed by the prior art. The Board referred to T 181/82 ("Spiro compounds"), where it was held that the disclosure "C1-C4 alkyl" does not individually disclose all members (including isomers, namely: methyl (C1), ethyl (C2), n- and iso- propyl (each C3), and n-, sec.-, iso- and tert.-butyl (each C4)).

By analogy, the Board found that disclosure of racemates in the prior art did not take away novelty of the claims, which related to specific enantiomers contained in those racemates:

6.2 The Board believes this principle applies in the present case to the extent that, judging by expert interpretations of the structural formulae and scientific designations to be found in the prior art, the latter describes only racemates. Given the asymmetrical carbon atom in the formula, the substances in question can indeed occur in many conceivable configurations (D- and L-enantiomers); that alone does not mean, however, that these configurations are disclosed in individualised form. The novelty of the D- and L-enantiomers is therefore not destroyed by the description of the racemates.

Novelty of the claimed enantiomers was therefore not destroyed in the specific case.

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Headnote:

A chemical substance is held to be new if it differs from a known substance in a reliable parameter. The configuration is such a parameter. If the prior art describes specific racemates in more detail by reference to their structural formulae, that alone does not disclose their specific configurations (here D- enantiomers); see points 6 and 7 of the Reasons (in conjunction with T 12/81 "Diastereomers", T 181/82 "Spiro compounds" and T 7/86 "Xanthines" in OJ EPO 1982, 296; 1984, 401; and 1988, 381 respectively).

The complete text of the decision can be accessed here.