G 0008/91 - Withdrawal of the appeal - #52

Citation rank: 52
No. of citations: 88

G 7/91 and G 8/91, in consolidated proceedings, looked  at the consequences of the withdrawal of the sole appeal (or of all appeals) in the ongoing appeal proceedings.

In the underlying opposition case T 357/89 the European patent had been maintained in amended form. The sole opponent appealed against this decision, requesting that it be set aside and the patent revoked. The respondents (patent proprietors) reacted by filing new claims. The appellant then withdrew its appeal.

The referring Technical Board in T 357/89 thought that a decision of the Enlarged Board was required as to whether appeal proceedings can be continued, if the sole appeal (or all appeals) have been withdraw.

That question had not yet been clarified by case law. Prior to G 8/91, Board members usually would merely note the fact that the appeal has been withdrawn, and the parties are informed by the Registry that the appeal proceedings have been terminated accordingly. Special forms were available for such situations (EPO Forms 3312, 3347, 3348).This practice was now under review.

The Enlarged Board generally considered that it was undesirable to change long-standing practices in the proceedings before the EPO, for reasons of continuity (point 4 of the reasons).

The existing practice was also in line with the principle of party disposition, according to which a public authority or a court normally may not continue proceedings if the procedural act which gave rise to the proceedings (such as the filing of an appeal) has been retracted (point 5 of the reasons).

The Enlarged Board further considered Rule 60(2) EPC1973 (now R. 84 EPC), according to which opposition proceedings can be continued in case of legal incapacity or death of the opponent. This, however, was seen as an exception.

Also the principle of ex officio examination (Art. 114 EPC) was looked at. A situation was envisaged, in which the appeal was withdrawn, and a Board of Appeals had to "stand by and watch" while the "flawed" decision (i.e., a "flawed patent") entered into force because of the withdrawal. The question arose of whether, in such cases, the public must be protected. The Enlarged Board of Appeals, however, found that the public interest (against "flawed" patents) was adequately served by the principle that any person is free to file an opposition against such patents (point 10.1 of the reasons).

In summary, the Enlarged Board saw no convincing reasons for abandoning or changing the then current practice of the Boards of Appeal according to which, in as far as the substantive issues of the appeal are concerned, the appeal proceedings are terminated by virtue of the withdrawal of the sole appellant's appeal, whether in ex parte or in inter partes proceedings. Hence, the Enlaged Board decided in favour of that current practice.

It decided that, in so far as the substantive issues settled by the contested decision at first instance are concerned, appeal proceedings are terminated, in ex parte and inter partes proceedings alike, when the sole appellant withdraws the appeal

Remark: G 8/93 later looked at the situation where the opponent and sole appellant withdraws his opposition during appeal proceedings. Also in this case the appeal proceedings are automatically terminated, with not possibility for the Board to continue. G 8/93 did not make it into the top-100 of most cited Boards of Appeal decisions. The text of G 8/93, however, can be found here.

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Headnote:

In so far as the substantive issues settled by the contested decision at first instance are concerned, appeal proceedings are terminated, in ex parte and inter partes proceedings alike, when the sole appellant withdraws the appeal.

The full text of the decision can be found here.

T 0248/85 - Product by process claims / Selection of closest prior art - #53

Citation rank: 53
No. of citations: 88

T 248/85 dealt with two issues: Fistly, it commented on the question of novelty and inventive step of product-by-process claims. Secondly, it considered how the closest prior art is to be selected under the problem-solution approach.

1. Product-by-process claims
Claim 1 in the underlying examination case was directed to "[a] method of radiation processing a product made at least in part from [...]". Claims 4 and 5 were directed to "[Irradiated products] characterised in that it was actually made by and is the direct product of the process claimed in any one of Claim 2 or Claim 3". The Examining Division held method steps 1-3 allowable, but refused the product-by-process claims (4 and 5).

The applicant appealed and requested that the decision regarding the product-by-process claims be reviewed.

T 248/85 recalled that in the earlier case T 150/82, the Board already decided that product-by-process claims are admissible only if the products themselves fulfil the requirements for patentability and there is no other information available in the application which could enable the applicant to define the product satisfactorily by reference to its composition, structure or other testable parameter (T 248/85, point 3 of the reasons).

They also observed that in the present case, the applicant apparently had tried to circumvent this interpretation by using wording borrowed from Art. 64(2) EPC, namely by requiring that the product is a "direct product" of the process defined in the process claims. Concerning the novelty of the product so defined, the applicant admitted that the products claimed were not distinguishable from the products of the prior art, but they argued that novelty was conferred by the process of the relevant method claims.

The Board did not accept this interpretation. T 150/82 was strictly applied to the instant claim wording. The product-by-process claims were thus considered non-novel.

2. Closest prior art / inventive step
As briefly mentioned above, the decision of the Examining Division (ED) found that method claims 1-3 were new and inventive; only product-by-process claims 4 and 5 lacked novelty. The appellant thus requested that only claims 4 and 5 be reviewed. In the event that the Appeal Board confirmed the ED's decision, the appellant requested that a patent be granted on the basis of method claims 1-3.

The Board decided otherwise. Firstly, they confirmed the ED's finding that the product-by-process claims were not novel. However, instead of granting a patent on the method claims 1-3 they reviewed the ED's decision regarding inventive step of claims 1-3. They observed that the ED simply accepted the state of the art mentioned in the description to be closest prior art, without even looking at the documents in detail, and without establishing which problem was solved by the distinguishing features of the invention over that prior art. The Board stated that it is necessary to define the problem underlying the alleged invention by comparison of the technical results achieved by the claimed invention with those achieved by the designated closest state of the art (point 11 of the reasons).
The Board therefore concluded that the problem-solution approach applied by the ED was flawed and remitted the case back to first instance for (proper) examination of method claims 1-3.

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Headnote:

1. The provisions of the EPC governing the requirements for patentability and those relating to the extent of protection fulfil different functions. A claim directed to subject-matter which, though coming within the extent of protection provided by the EPC, does not meet the requirements for patentability laid down in Articles 52 to 57, is not allowable. A known product is not rendered novel merely by means of further definition (as a "product of process").
2. An objective assessment of inventive step starting from the closest prior art implies that the latter has been positively identified and considered.

The full text of the decision can be found here.

G 0011/91 - Correction of obvious errors ("Glu-Gln") - #54

Citation rank: 54
No. of citations: 87

G 11/91 is one of two G-decisions (the other one is G 3/89) which looked at the conditions under which "obvious errors" can be corrected under the EPC.

The possibility of correcting obvious errors is provided for by Rule 139 EPC (formerly R. 88 EPC1973), which reads:

R. 139 - Linguistic errors, errors of transcription and mistakes in any document filed with the European Patent Office may be corrected on request. However, if the request for such correction concerns the description, claims or drawings, the correction must be obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction. 

In the underlying appeal case, T 184/91, the applicant-appellant requested correction of an amino acid residue in a claimed amino acid sequence, from "Glu" (stands for glutamate) to read "Gln" (stands for glutamine). The Examining Division refused this request on the grounds that this corrected information could not be derived from the original application, but only from a laboratory report provided by a third party. That was considered contradictory to Article 123(2) EPC.

The Technical Board of Appeals asked the Enlarged Board whether correction under R. 88 EPC1973 (R. 139 EPC) was possible in cases where the correction would lead to added subject matter in the sense of Art. 123(2) EPC.

The Enlarged Board firstly stated that a correction under Rule 88 EPC1973 is an amendment of the application, and as such it must comply with Art. 123(2) EPC (point 1 of the reasons).

The strict standard set by the Enlarged Board of Appeals for allowing correction under Rule 88 EPC1973 was formulated as follows:

"The parts of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) may therefore be corrected under Rule 88, second sentence, EPC only within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge and seen objectively and relative to the date of filing, from the whole of these documents as filed." (point 3 of the reasons)

Regarding the question of extension of subject matter, the Enlarged Board stated:

"A correction under Rule 88, second sentence, EPC is of a strictly declaratory nature. The corrected information merely expresses what a skilled person, using common general knowledge, would already derive on the date of filing from the parts of a European patent application, seen as a whole, relating to the disclosure. This does not therefore affect the content of the European patent application as filed. [...] Since a correction admissible under Rule 88, second sentence, EPC is thus of a declaratory nature only, it does not infringe the prohibition of extension under Article 123(2) EPC either." (point 4 of the reasons)

According to the Enlarged Board, errors that concern disclosure (i.e., description, drawings and claims) can only be corrected, if they are "obvious" in the sense that (i) it is obvious that an error has occurred, and (ii) it is obvious that the requested correction is what was intended in the first place (points 5 and 6 of the reasons).

For the underlying appeal case T 184/91 this meant that the requested correction of "Glu" to "Gln" (on the basis of information contained in laboratory notebooks) was not possible.

Remark: The significance of G 11/91 and G 3/89 goes beyond the question of allowing corrections of obvious errors. The two decisions were the first to mention the concept of "direct and unambiguous disclosure", which was later applied to other legal questions, such as the right to priority (G 2/98), divisional applications (G 1/06), and the assessment of novelty (EPO Case Law Book I.C.4.1).

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Headnote:

1. The parts of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) may be corrected under Rule 88, second sentence, EPC only within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed. Such a correction is of a strictly declaratory nature and thus does not infringe the prohibition of extension under Article 123(2) EPC.
2. Evidence of what was common general knowledge on the date of filing may be furnished in connection with an admissible request for correction in any suitable form.

G 0004/88 - Transfer of opposition I - #55

Citation rank: 55
No. of citations: 87

G 4/88 is the first of two G-decisions which looked at the question of whether the status of the opponent can be transferred, and under which circumstances (the other decision being G 2/04.)

In the underlying case, a company X had filed the opposition in the interest of a part of its business. X assigned that part of its business (in the interest of which the opposition was filed) to another company, Y. The original opponent, X, subsequently merged with yet another company to form a company Z.

Z was the universal successor of X and, as such, admissibly lodged an appeal. At the same time, Z requested that the opposition be transferred to Y, which by then held the part of the business, in the interest of which the opposition was filed.

The Technical Board in charge wondered whether such a transfer of the opposition was possible, and referred a corresponding question to the Enlarged Board of Appeals.

The Enlarged Board firstly observed that R. 60(2) EPC1973 (now R. 84 EPC) implicitly acknowledges that the opponent status can be transferred by way of "universal succession", in that case from a deceased to its heir.

The Enlarged Board then considered the case where the opposition was filed in the interest of a part of the opponent's business and that part of the opponents business was sold or transferred. The Enlarged Board stated:

"The Enlarged Board considers that, in such a situation, the opposition constitutes an inseparable part of those assets. Therefore, insofar as those assets are transferable or assignable under the applicable national laws, the opposition which is part of them must also be regarded as transferable or assignable in accordance with the principle that an accessory thing when annexed to a principal thing becomes part of the principal thing." (point 6 of the reasons)

The transfer of the opposition from Z to Y was therefore possible.

Remark: It is important to note that in G 4/88 the "parts of the business" (in the interest of which the opposition was filed) did not have "legal personality" at the time the opposition was filed. Hence, it was initially not possible to file the opposition in the name of those "parts". The situation was different in G 2/04, where the entity to which the opposition was to be transferred had legal personality at the time of filing of the opposition, but the opposition was nevertheless filed in the name of its mother company. In that case, the opposition could not (freely) be transferred from mother company to its former subsidiary.

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Headnote:

An opposition pending before the European Patent Office may be transferred or assigned to a third party as part of the opponent's business assets together with the assets in the interests of which the opposition was filed.

The full text of the decision can be found here.

T 0176/84 - Prior art from a "neighboring technical field" - #56

Citation rank: 56
No. of citations: 85

T 176/84 was concerned with a decision from the examining division, which had refused an application claiming a hand-operatable pencil sharpener including a container to collect the shavings, enclosed to prevent egress of shavings, the containing having an aperture through which the pencil to be sharpened can be inserted, and the aperture is closed completely when the sharpener is not in use. The closing of the pencil sharpener was effected by a slider, which slider was pushed open by the pencil, when the pencil was inserted.

The state of the art included hand-operated pencil sharpener, which also included a slider to open and close the aperture, however, those sliders had to be opened manually, not automatically by insertion of the pencil.

The examining division, in the contested decision, considered that the claimed pencil sharpener lacked inventive step in view of a document disclosing a savings-box having an aperture, which was opened automatically when a coin was inserted into the box and then closed again. The examining division was of the opinion that the field of saving-boxes was sufficiently close to the field of pencil sharpeners for it to be taken into account, because both pencil sharpeners and savings boxes belonged to the "broader field of the closing of containers".

The Board in T 176/84 disagreed. They stated: 

5.3.1 While it is indeed perfectly reasonable to expect a person skilled in the art if need be, i.e. in the absence of useful suggestions in the relevant field as to how a given problem might be solved, to look for suitable parallels in neighbouring fields, the question of what is a neighbouring field is one of fact and the solution depends, in the opinion of the Board, on whether the fields are so closely related that the person skilled in the art seeking a solution to a given problem would take into account developments in the neighbouring field. It is furthermore quite reasonable to expect a skilled person to refer to the state of the art in the general field of technology in which the same problems or problems similar to those in the special field of the application extensively arise and of which a person skilled in the art must be expected to be aware.

5.3.2 In the present case, even adopting the same premise as the Examining Division that the person skilled in the art by abstracting the problem would eventually, in his search for suggestions as to how he might solve the problem underlying the application, turn to the broader, that is to say general field of container closing, while he would then have entered what the Examining Division considers to be the generic field, he would not have reached the field of securing mechanisms for savings-box slots. In view of the technological differences between the two fields - storage of coins in a container as opposed to sharpening of pencils with provision for collection of shavings - there is no reason why it should occur to a skilled person to refer to this specific area - which the Examining Division considers to be part of the same broader field - to see how similar problems had been solved there.

The Board concluded that the claimed pencil sharpener was inventive.

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Headnote:

The state of the art to be considered when examining for inventive step includes, as well as that in the specific field of the application, the state of any relevant art in neighbouring fields and/or a broader general field of which the specific field is part, that is to say any field in which the same problem or one similar to it arises and of which the person skilled in the art of the specific field must be expected to be aware.

The full text of the decision can be found here.

J 0005/80 - Re-establishment of rights / error by an employee - #57

Citation rank: 57
No. of citations: 84

In J 5/80 the Legal Board had to decide on a request for re-establishment of rights (restituio in integrum; Art. 122) with respect to a Euro-PCT application, which was deemed withdrawn due to non-payment of the designations fees. Only the filing fees were paid upon entry into the European national/regional phase.
 The applicant filed an appeal which included a request to set the Receiving Section's decision (finding that the application is deemed withdrawn) aside and, as an auxiliary request, re-establishment of rights under Art. 122.

In the Grounds of Appeal and in a written statement made by the lady in charge of administration in his representative's office, it was stated that the representative had instructed her to pay all necessary fees and that she had interpreted Article 78 EPC as meaning that only the filing fee had to be paid within one month after filing when a PCT application designating the European Patent Office passed to the national phase.

The Board stated under points 7 and 8 of the reasons that

"7. To benefit from Article 122 EPC, a professional representative who employs assistants must be able to establish that he has used the due care required. In general, then, he should choose for the work a suitable person, properly instructed in the tasks to be performed, and he should exercise reasonable supervision over the work.

8. However, account should also be taken of the fact that by Article 134(1) EPC, the Contracting States have in principle confined representation of applicants before the European Patent Office to "professional representatives" who, by virtue of their qualification should guarantee the best possible representation. It follows that a representative cannot relieve himself of responsibility for carrying out tasks which, by reason of his qualification, fall upon him personally, such as, for example, the interpretation of laws and treaties. If he delegates such tasks to an employee and if the latter makes an error in the course of that work which results in the failure to observe a time limit, the representative cannot establish that he took all due care required by the circumstances."

In the case at hand, the general task of paying all fees due within the prescribed periods given by the professional representative to the lady in charge of administration was considered "far from easy" by the Board, given that two international treaties were involved. The Board was therefore of the opinion that the professional representative could not, for the purpose of avoiding the loss of a right, establish that he took all due care required by the circumstances.

The request for re-establishment of rights was therefore not allowed.

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Headnotes I-IV:

I. When an applicant is represented by a professional representative, a request for restitutio in integrum cannot be acceded to unless the representative himself can show that he has taken the due care required of an applicant or proprietor by Article 122(1) EPC.
II. If the representative has entrusted to an assistant the performance of routine tasks such as typing dictated documents, posting letters and parcels and noting time limits the same strict standards of care are not expected of the assistant as are expected of the applicant or his representative.
III. A culpable error on the part of the assistant made in the course of carrying out routine tasks is not to be imputed to the representative if the latter has himself shown that he exercised the necessary due care in dealing with his assistant. In this respect, it is encumbent upon the representative to choose for the work a suitable person, properly instructed in the tasks to be performed, and to exercise reasonable supervision over the work.
IV. However, if the representative delegates to an assistant a task which, by virtue of his professional qualification, normally falls to him, as for example the interpretation of laws and treaties, the representative will not be able to establish that he has exercised all due care required by the circumstances.
[...]

T 0229/85 - Objective technical problem / no pointers to the solution - #58

Citation rank: 58
No. of citations: 84

T 229/85 dealt with an important aspect of the problem-solution approach, namely with the question of how to formulate the objective technical problem.


As already mentioned here in this blog, the problem-and-solution approach, normally includes three stages:

(i) determining the "closest prior art",

(ii) establishing the "objective technical problem" to be solved, and

(iii) considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person (GL 2017, G-VII, 5).

T 229/85 was is concerned with step (ii).

In the underlying decision, the examining division had refused the application for lacking inventive step. The invention concerned an etching process in which metal, such as copper, is etched from printed circuits by means of a solution containing sulphuric or phosphoric acid and hydrogen peroxide, and the etching solution is recycled. A problem occurring in the prior art processes was that the hydrogen peroxide decomposed through catalytic action of the etched/dissolved metal, mostly during recycling. Hydrogen peroxide therefore had to be added in relatively large amounts. The prior art used "stabilisers" to neutralise the dissolved metal ions, thereby reducing the amount of hydrogen peroxide that had to be added during the process. The invention proposed adding the hydrogen peroxide such that the "quantity of hydrogen peroxide [is] just sufficient for a single etching operation [and] is added to the solution immediately before or at the moment that the solution is applied to the circuit board it is desired to etch and that when the etching process is completed practically no hydrogen peroxide remains in the solution" (characterising feature of claim 1). Because the decomposition of the hydrogen peroxide (in particular during recycling) is reduced, the inventive process did not need (and use) any stabilisers in the etching solution.

The examining division formulated the technical problem as lying in the provision of a process that prevented the decomposition of hydrogen peroxide without using stabilisers. The Board, however, found that this definition of the problem was influenced by the information contained in the present application, and therefore inadmissibly incorporated part of the solution offered by the invention.

The Board stated:

"The idea of doing away with stabilisers is an essential part of the teaching of the invention as reflected in the solution given above and ultimately consisting in regulating the amount of hydrogen peroxide added to the solution and its timing. However, the technical problem addressed by an invention must be so formulated as not to contain pointers to the solution, since including part of a solution offered by an invention in the statement of the problem must, when the state of the art is assessed in terms of that problem, necessarily result in an ex post facto view being taken of inventive activity. For this reason alone the decision of the Examining Division cannot stand." (point 5 of the reasons)

 For that reason, the Board decided that the decision of the examining division was set aside and the matter was referred back to first instance for a patent to be granted on the basis of the application as originally filed.


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Headnote:

The technical problem to be solved by an invention must be so formulated as not to contain pointers to the solution.

The full text of the decision can be found here.

G 0001/05 - Divisional/ASTROPOWER - #59

Citation rank: 59
No. of citations: 83

G 1/05 and G 1/06 dealt (in consolidated proceedings) with questions related to divisional applications, and how these are to be treated under the EPC. Both decisions were published in the same issue of the OJ (5/2008) and differed only with respect to their Headnote.

G 1/05 was concerned with the question of whether divisional applications, which at the time of filing extended over the content of its parent application (Art. 76(1), second sentence) could be amended so as to overcome the deficiency. It had been the common and undisputed practice of the EPO at that time to allow such amendments of divisional applications.

However, the Technical Board of Appeals of the referring decision (T 39/03) had strong reservations against this established practice. They saw inconsistencies both with recent developments in the case law at that time, and with Rule 25 EPC1973 (now Rule 36), setting the time limit for filing divisional applications. Specifically, T 39/93 saw difficulties with a new trend in case law (notably with T 1158/01) which required that for establishing the validity of a second-generation divisional application, validity of the first-generation divisional application had to be established as well (T 1158/01 is now overturned by G 1/06). The Technical Board in T 39/03 also mentioned that under UK patent law, a provision similar to Art. 76(1) EPC was interpreted not to allow amendments after filing of a divisional application. (The UK law, however, had then been amended to explicitly allow such amendments, while Art. 76(1) of the EPC was not amended.)

The Enlarged Board in G 1/05 looked at the wording of the relevant provisions of the EPC, and also considered the Travaux préparatoires. They found nothing that would indicate that a divisional application cannot be amended to overcome deficiencies under Art. 76, as is allowed for any other European patent application as well. They compared the situation of amendments to overcome Art. 76 violations with amendments to overcome extension of subject matter under Art. 123(2). They concluded that not allowing an amendment to bring the divisional application into conformity with Article 76(1), second sentence, would create a difference in treatment between comparable situations.

The Enlarged Board concluded that all considerations point in favour of an interpretation of Art. 76(1) EPC permitting an applicant to amend a divisional application after the application has been filed so as to comply with Art. 76, second sentence, provided - of course - that the amendment complies with the other requirements of the EPC.

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Headnote:

So far as Article 76(1) EPC is concerned, a divisional application which at its actual date of filing contains subject-matter extending beyond the content of the earlier application as filed can be amended later in order that its subject-matter no longer so extends, even at a time when the earlier application is no longer pending. Furthermore, the same limitations apply to these amendments as to amendments to any other (non-divisional) applications.

The full text of the decision can be found here.

J 0002/86 - Isolated mistake / resitutio - #60

Citation rank: 60
No. of citations: 83

J 2/86 deals with re-establishment of rights under Art. 122 EPC (restitutio in integrum). The Summary of Facts and Submissions, the Reasons and Order are the same as in J 3/86, which was already mentioned in this blog here.

In the underlying case the applicant failed to pay the accumulated third and fourth annuity fees for two divisional applicaitons, which were due upon filing, but could be paid within 4 months of the filing date (now Art. 86, Rule 51(3) and (2)). The applicant was informed that the third and fourth annuity fees could still be validly paid within 6 months of the due date, provided that a surcharge is paid.

The representative of the applicant then also failed to pay the 5th year annuitys of the two divisional, which became due some time later. He was again informed by the EPO that the 5th year annuity could still be validly paid within 6 months of the due date, provided that a surcharge is paid (R. 53(2) EPC).

The applicant paid the 5th year annuities within the 6 months time limit. Payment of the third and fourth annuity fees was made, however, only 3 respectively 1 days too late.

The respresentative filed a request for re-establishment of rights according to Art. 122 EPC. In the statement setting out the facts he stated that the failure to pay the fees in time was "because of the circumstances arising from the arrangements for the payment of maintenance fees" between the representative's office and the appellant. The arrangement was that the representative was responsible for filing and prosecution of European applications, and the Appellant was responsible for payment of maintenance fees. However, the arrangement between applicant an representative had recently been changed, and those changes led to an exceptional situtation in which the payment of the 3rd and 4th annuities was not made in due time (see link below for details).

The Board evaluated the arguments and facts and stated:

"The Board recognises that 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. Thus, in the Board's view, in spite of all due care required by the circumstances having been taken by the Appellant, the Appellant was unable to pay the third and fourth year renewal fees for these two divisional applications within the time limits required by the EPC (because of such special circumstances)." (point 4 of the reasons)

The criterion that - in restitutio cases - the loss of a substantive right should "not result from an insolated mistake within a normally satisfactory system" has from then on been applied in many restitutio cases (J 28/92, J 13/93, J 13/07, J 11/09, J 12/09, T 381/93, to name a few).

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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 accessed here.

T 0279/89 - Novelty of selection inventions - #61

Citation rank: 61
No. of citations: 79

T 279/89 is one of two decisions, which are frequently cited as having defined the criteria under which novelty of (numerical) selection inventions are to be assessed. It was, however, the other decision (T 198/84) which has defined the criteria. T 279/89 merely cited the criteria developed by T 198/84 and applied them to their case.

In the underlying examination case of T 279/89, the examination division rejected the application for lack of novelty. The invention related to a method of injection molding of an elastomer, wherein one component of the elastomer was defined as containing "more than 10% of the 2,4'-isomer". The invention was considered by the examining division to lack novelty over two prior art documents, which disclosed similar methods using up to 50% of the 2,4'-isomer, and 20 to 95% of the 2,4'-isomer, respectively.

The applicant filed an appeal based on three requests ("A", "B", "C"), in which the amount of the 2,4'-isomer was:

- request A: greater than 10%,
- request B: greater than 10%, less than 20%,
- request C: greater than 10% and up to 15%.

The Appeal Board found and introduced a document D4 disclosing 0.5 to 25% of the 2,4'-isomer. The The applicant/appellant argued that the feature defining the relative amount of the 2,4'-isomer would establish novelty over the prior art in each case, in particular, over D4.

The Board referred to T 198/84 and applied the criteria developed therein for assessing novelty of sub-ranges over the disclosure of a broader numerical range. These were:

A sub-range of numerical values can be regarded novel over the disclosure of a broader range, when each of the following criteria is satisfied:

1. the selected sub-range should be narrow;
2. the selected sub-range should be sufficiently far removed from the known range illustrated by means of examples;
3. the selected area should not provide an arbitrary specimen from the prior art, i.e. not a mere embodiment of the prior description, but another invention (purposive selection).

Applying these criteria, the Board in T 279/89 found that none of requests "A", "B" and "C" was novel over D4. Non-novelty of request "A" was out of the question. Regarding requests "B" and "C", the Board stated:

4.1.1. The present ranges of 10 to 20% and 10 to 15% in Claim 1 according to requests B and C cannot be regarded as narrow selections, since they correspond to approximately 40 to 80% and respectively 40 to 60% of the range known from the prior art. Moreover, the ranges newly defined are not near the lower or upper end of that known range, but right in the middle thereof. For this reason alone, novelty of the ranges in question cannot be acknowledged.

In addition, it was concluded by the Board that the parameter range chosen in requests "B" and "C" was not a purposive selection, as required by criterion 3, above.

As a consequence, the appeal was dismissed.

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Headnote:

none

The full text of the decision can be found here.

G 0002/03- Disclaimer/PPG ("undisclosed" disclaimers) - #62

Citation rank: 62
No. of citations: 79

G 2/03 and G 1/03 both deal with similar questions relating to the admissibility of "undisclosed disclaimers", i.e., amendments excluding from a claim subject matter where neither the disclaimer nor the disclaimed subject matter were disclosed in the original application as filed. The text of both decisions is identical.

Before G 1/03 and G 2/03, undisclosed disclaimers had been widely accepted by the Technical Boards, although there was variation in the conditions and circumstances under which undisclosed disclaimers were allowed.

This practice had been fundamentally called into question by T 323/97, which treated disclaimers as any other amendment, and thus required that the undisclosed disclaimer must find basis in the original application as-filed (which is, by definition, never the case).

The referring decisions of G 1/03 and G 2/03 (T 507/99 and T 451/99) seeked clarification regarding the conditions and circumstances under which undisclosed disclaimers are to be admitted.

The Enlarged Board of Appeals considered various arguments advanced by the referring decisions, by the President of the EPO and by the public. The most far-reaching argument, according to which a disclaimer is nothing but a voluntary restriction of the claim, and therefore not a technical feature, which could thus not infringe Art. 123(2), was rejected. Any amendment to a claim was considered to have a technical meaning, otherwise the amendment would be useless.

1. Undisclosed disclaimers to establish novelty over Art. 54(3) prior art
The Enlarged Board went on to analyse the motivation of Technical Boards which had previously allowed undisclosed disclaimers to establish novelty over post-published prior art under Art. 54(3) (also called "prior rights"). The Enlarged Board considered that prior art under Art. 54(3) intrinsically poses a problem, because the applicant cannot know the content of such prior art, when he files his application. It would thus be somewhat unfair not to allow the applicant to react to the publication of the 54(3) document by excluding subject matter disclosed therein. The Enlarged Board also reviewed the manner in which the national patent systems dealt with "prior rights" (e.g., the "prior claim approach" vs. "whole contents approach") and noted that the EPC chose to use the stricter "whole contents approach", under which the whole content of the Art. 54(3) document could be held against the later application. In exchange, the applicant of the later application should be allowed some room to maneuver, in cases where such unexpected 54(3) documents showed up.

Taking various other aspects into account, the Enlarged Board finally found that undisclosed disclaimers establishing novelty over Art. 54(3) prior art are admissible, because the disclaimer is introduced for legal reasons only, and does not change the technical teaching (reasons 2.1.3).

2. Undisclosed disclaimers to avoid "accidental anticipation"
The Board also found it appropriate that undisclosed disclaimers are allowed, if the disclaimer served to save the claim from "accidental anticipation", i.e., from anticipation by a document which is, although novelty-destroying, so unrelated and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention.

3. Undisclosed disclaimers to exclude subject matter excluded from patentability for non-technical reasons
A third group of circumstances under which the introduction of undisclosed disclaimers was held admissible covers cases, in which the claim covers subject matter excluded from patentablity for non-technical reasons, such as the medical methods of Art. 53(c), or inventions contrary to "ordre public" or morality of Art. 53(a). Also here, undisclosed disclaimers were allowed.

4. Futher conditions to be met for undisclosed disclaimers to be admissible
As further conditions to be met for an undisclosed disclaimer to be admissible, the Enlarged Board stated that the disclaimer should not remove more than necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons.

The disclaimer must also not become relevant for the assessment of inventive step or sufficiency of disclosure. Otherwise it would obviously change the technical teaching of the application and thus add subject-matter contrary to Article 123(2) EPC.

The amended claim containing the disclaimer must be clear and concise, as required by Art. 84 EPC.

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Headnote:

I. An amendment to a claim by the introduction of a disclaimer may not be refused under Article 123(2) EPC for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of the claim have a basis in the application as filed.
II. The following criteria are to be applied for assessing the allowability of a disclaimer which is not disclosed in the application as filed:
II.1 A disclaimer may be allowable in order to:
- restore novelty by delimiting a claim against state of the art under Article 54(3) and (4) EPC;
- restore novelty by delimiting a claim against an accidental anticipation under Article 54(2) EPC; an anticipation is accidental if it is so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention; and
- disclaim subject-matter which, under Articles 52 to 57 EPC, is excluded from patentability for non-technical reasons.
II.2 A disclaimer should not remove more than is necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons.
II.3 A disclaimer which is or becomes relevant for the assessment of inventive step or sufficiency of disclosure adds subject-matter contrary to Article 123(2) EPC.
II.4 A claim containing a disclaimer must meet the requirements of clarity and conciseness of Article 84 EPC.

G 0001/86 - Re-establishment of rights of opponent - #63

Citation rank: 63
No. of citations: 78

Re-establishment of rights (also referred to as restitutio in integrum) is a legal remedy, which allows the applicant or proprietor to be re-instated in his rights, which he/she lost due to non-observance of a time limit in spite of "all due care" required under the circumstances having been taken. The remedy is based on Art. 122 EPC which expressly states that it is available for the "applicant for or proprietor of a European patent".

In the underlying appeal case, an opponent had filed an appeal against the opposition division’s interlocutory decision with which the patent was upheld in amended form. However, he failed to submit the Grounds of Appeal within the 4-month time limit of Art. 108 EPC. Admissibility of his appeal was thus at risk. The opponent filed the Grounds of Appeal after expiry of the 4 month time limit together with a request for re-establishment of rights.

The competent Technical Board of Appeals realised that the requester (opponent) was not the "applicant for or proprietor of the European patent”, as required by Art. 122, but it seemed unfair if the legal remedy of Art. 122 was not available to the appellant-opponent in this case. It referred the following question to the Enlarged Board of Appeals:

“Can an appellant as opponent have his rights re-established under Article 122 EPC if he has failed to observe the time limit specified in Article 108, 3rd sentence, EPC for filing the statement of grounds of appeal?”

The Enlarged Board observed that a loss of rights for failure to observe a time limit was particularly harsh when person who missed the time limit was not actually at fault and the failure was attributable to an oversight which occurred in spite of all due care required by the circumstances having been taken (point 1 of the reasons).

Regarding the question, whether Art. 122 EPC was applicable to persons other than the applicant or proprietor, the Enlarged Board stated:

"In the view of the Enlarged Board of Appeal [the first sentence of Art. 122 EPC] must not be interpreted as excluding a priori all other persons not expressly referred to in Article 122(1) EPC from re-establishment of rights, as this would clearly have inequitable and logically unjustifiable consequences. Other parties who are not applicants or patent proprietors may also through no fault of their own fail to observe a time limit in proceedings before the EPO and as a result run the risk of an irrevocable loss of rights. These include, for example, professional representatives before the EPO (Article 20 EPC), inventors (Rule 19 EPC) and persons who, although not applicants, are entitled to a European patent (Article 61 EPC). It is not clear on what grounds these persons should be excluded from re-establishment of rights." (point 3 of the reasons)

Based on the historical documentation relating to the EPC ("traveaux préparatoires"), the principle of equal treatment of parties, and taking the legislators original intent into account, it decided that Art. 122 EPC was also applicable to the appellent-opponent who failed to observe the 4 moth time limit for filing the Grounds of Appeal.

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Headnote:

Article 122 EPC is not to be interpreted as being applicable only to the applicant and patent proprietor. An appellant as opponent may have his rights re-established under Article 122 EPC if he has failed to observe the time limit for filing the statement of grounds of appeal.

The full text of the decision (in three languages) can be found here.

T 0156/84 - Ex officio examination - #64

Citation rank: 64
No. of citations: 78

T 156/84 dealt with the principle mentioned in Art. 114(1) EPC that the EPO examines the facts of the case "of its own motion" (ex officio examination), and its conflict with Art. 114(2) EPC allowing the EPO to disregard late-filed facts and evidence.

In the underlying opposition case, the opposition division (OD) had disregarded documents D4 and D5, solely because they were filed after expiry of the 9 months opposition period. The OD justified the non-admittance of the documents into the procedure by stating that the nine-month period was sufficiently long and the two citations had been publicly available for a long time, as a matter of fact since 1933 and 1978 respectively.

The Board found that this conduct was not proper, taking into account the principles expressed in Art. 114(1) EPC. The Board stated:

"The Board considers that the principle of examination by the Office of its own motion enshrined in Article 114(1) EPC takes precedence over the possibility of disregarding facts or evidence not submitted in due time provided for in Article 114(2) EPC. This is evident from the wording of both provisions. That of Article 114(1) EPC: "ermittelt" in the German text, "shall examine" in the English and "procède" in the French, expresses an obligation whereas Article 114(2) EPC implies a discretion - the German text choosing the words "braucht nicht zu berücksichtigen", the English text "may disregard" and the French "peut ne pas tenir compte". The wording alone thus makes it clear that the provision in paragraph 1 has priority over that in paragraph 2." (point 3.4 of the reasons)

This does not only apply to examination proceedings (which may be regarded as being "100% ex-officio") but also in inter partes opposition and appeal proceedings. The Board stated in this regard:

"Even in inter partes proceedings before the EPO, which is what opposition proceedings are, account must be taken not only of the interests of the parties involved; the EPO also has a duty vis-à-vis the public not to grant or maintain patents which it is convinced are not legally valid. This is the real reason for the introduction of the principle of examination by the Office of its own motion in Article 114(1) EPC " (point 3.5 of the reasons)

T 156/84 says that, in order to saveguard the interests of the public, an OD or Appeal Board cannot disregard late-filed documents for the sole reason that they are late filed. The OD and Boards have to examine objectively the relevance of the citation introduced late into the proceedings and have to communicate the results to the parties at least in its decision.

Since this was not done by the OD in the underlying case, the case was remitted to the OD for further examination, taking D4 and D5 into account.

Remark: T 156/84 is a rather early decision on the principle of ex officio examination. Nowadays, G 10/91 ("Examination of oppositions/appeals") should be referred to regarding the proper amount of ex officio examination in opposition and appeal proceedings at the EPO.

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Headnotes:

1. The principle of examination by the EPO of its own motion (Article 114(1) EPC) takes precedence over the possibility of disregarding facts or evidence not submitted in due time. This follows from the EPO's duty vis-à-vis the public not to grant or maintain patents which it is convinced are not legally valid.
2. The EPO has to examine the relevance of citations introduced late into the proceedings and has to communicate the results to the parties at least in its decision. No final decision on the opposition can be taken until such an examination has been performed.
3. Late-filed documents can be designated as not material by the EPO without having to give detailed reasons as it does in the case of citations referred to in due time.
4. Late-filed documents are not deemed not to have been submitted in due time simply because they have not been submitted during the opposition period; if careful preparation of the opposition proceedings would have revealed the late-filed documents earlier, it is the opponent's task to set out the circumstances that prevented him from mentioning the documents earlier.

The full text of the decision can be accessed here.

T 1067/97 - Intermediate generalisation - #65

Citation rank: 65
No. of citations: 78

T 1067/93 concerns "intermediate generalisations". This term was developed by case law and it refers to amedments by which features taken from a specific embodiment are added to a broader claim in isolation, i.e., without adding the remaining features of that specific embodiment to the claim. Such amendents result in claims, which are more restricted than the original claim, but broader (i.e., more generic) than the specific embodiment. Their scope is in between ("intermediate") the specific embodiment and the broader claim.

In the underlying opposition case the proprietor amended claim 1 of the Main Request by introduction of the the feature

"a molar ratio [SiO2]/[M2O], which ranges from 1.0 to 1.5"

to claim 1. This feature was taken from a "particularly preferred embodiment" in which the above feature was part of the definition of a photographic developer solution, which further included  "a concentration of SiO2 of 1 to 4% by weight" and "a replenisher having alkali strength equal to or more than that of the developer".

The Board referred to established case law and stated that:

"... if a claim is to be restricted to a preferred embodiment, it is normally not admissible under Article 123(2) EPC to extract isolated features from a set of features which have originally been disclosed in combination for that embodiment. Such kind of amendment would only be justified in the absence of any clearly recognisable functional or structural relationship among said features" (point 2.1.3 of the reasons)

Since the added feature of claim 1 of the Main Request had a functional relationship with the remaining features of the embodiment from which it was taken, the amendment was not allowed (Art. 123(2) EPC).

The proprietor also filed an Auxiliary Request, which contained the "molar ratio" feature above, and also the remaining features of the preferred embodiment. Since the features of the embodiment were added  to the claim in combination, the Auxiliary Request was found not to infringe Art. 123(2) EPC. The Auxiliary Request, however, lacked inventive step.

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Headnote:

none

The full text of the decision can be accessed here.