G 0010/93 - Scope of examination in ex parte appeal - #9

Citation rank: 9
No. of citations: 234

G 10/93 is concerned with the question of whether, and to what extent, an Appeal Board in ex parte proceedings (i.e., in examination-appeal cases) can or must examine those requirements, which the Examining Division considered to have been met.

Previously (in G 10/91) the Enlarged Board had taken a strict view on the power of Appeal Boards to consider fresh grounds of opposition in inter partes appeal proceedings. The Enlarged Board held that fresh grounds can only be examined in inter partes appeal proceedings, if the proprietor agrees to the introduction of the fresh grounds into the proceedings. The decision took into account the contentious nature of opposition appeal proceedings and their status as a post-grant procedure.

The Enlarged Board in G 10/93 found that the situation ex parte appeal proceedings is different. They stated:

"In contrast to opposition appeal proceedings, the judicial examination in ex parte proceedings concerns the stage prior to grant and lacks a contentious nature. It relates to the examination of the requirements for the grant of a patent in proceedings in which only one party - the applicant - is involved. The instances responsible must ensure that the conditions for patentability exist. In ex parte proceedings, therefore, the boards of appeal are restricted neither to examination of the grounds for the contested decision nor to the facts and evidence on which the decision is based, and can include new grounds in the proceedings." (point 3 of the proceedings)

The Enlarged Board - on the other hand - also did not consider the examination-appeal procedure a mere continuation of the examination proceedings. In this context they stated:

"The power to include new grounds in ex parte proceedings does not however mean that boards of appeal carry out a full examination of the application as to patentability requirements. This is the task of the examining division. Proceedings before the boards of appeal in ex parte cases are primarily concerned with examining the contested decision. If however there is reason to believe that a condition for patentability may not have been satisfied, the board either incorporates it into the appeal proceedings or ensures by way of referral to the examining division that it is included when examination is resumed." (point 4 of the reasons)

Regarding the question of whether the consideration by the Appeal Board of requirements, which the Examining Division considered to have been met, could be viewed as violation of the principle of interdiction of reformatio in pejus, the Enlarged Board saw no problems. They noted that a decision of an Examination Division to refuse an application meant a total loss of rights. Therefore, any decision of the Appeal Board on the refusal cannot put the applicant in a worse situation than if he had not appealed (point 6 of the reasons). Reformatio in pejus is thus impossible.

Also the appellant's argument in the referring appeal case, a communication from the Examining Division stating that a particular version of an application was patentable would be equivalent to a (partial) grant of a patent, was not accepted by the Enlarged Board. They stated that the Appeal Board had the power to confirm the Examining Division's decision to refuse, even if the contested decision was based on different requirements of the EPC.

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Headnote:

In an appeal from a decision of an examining division in which a European patent application was refused the board of appeal has the power to examine whether the application or the invention to which it relates meets the requirements of the EPC. The same is true for requirements which the examining division did not take into consideration in the examination proceedings or which it regarded as having been met. If there is reason to believe that such a requirement has not been met, the board shall include this ground in the proceedings.

The full text of G 10/93 can be accessed here.

T 1002/92 - Admissibility of late-filed evidence (in opposition and appeal) - #10

Citation rank: 10
No. of citations: 218

T 1002/92 deals with the issue of late-filing of evidence, in particular late-filed documents.

In this case, the opponent appealed against the decision of the Opposition Division rejecting his opposition (which was based on Art. 100(a), Art. 52(2)(c), schemes, rules or methods for doing business, and Art. 56).

Claim 1 related to a "System for determining the queue sequence for serving customers" in a telephone system. During the proceedings before the Opposition Division, the opponent attempted unsuccessfully to introduce evidence concerning prior use of Ericson's "Triton" telephone system, more than two years after the grant of the opposed European patent.

In the annex to the summons to oral proceedings, the Board expressed its preliminary view, that the subject-matter of claim 1 was a technical system with co-operating technical components, in which the operation of the computing means solves a technical problem. It was thus regarded patentable under Art. 52(1). They also stated that that the documents files after expiry of the opposition period appeared to have no influence on the decision to be taken, and might therefore be regarded as inadmissible under Article 114(2) EPC. In response the appellant filed  further evidence.

During the oral proceedings the opponent argued again that the late-filed evidence should be admitted. The Board used the opportunity to clarify the principles that apply when assessing whether late-filed evidence is to be admitted or not. They noted that Art. 99(1), R. 55(c) EPC1973  (now R. 76(c) EPC) not only required that the Notice of Opposition includes

(i) the extent to which the European patent is opposed; and
(ii) the grounds on which the opposition is based; but also:
(iii) an indication of the facts, evidence and arguments in support of these grounds.

The Board quoted the Enlarged Board of Appeal in G 9/91 and G 10/91 where it is said that:

"Rule 55 (c) EPC only makes sense interpreted as having the double function of governing (together with the other provisions) the admissibility of the opposition and of establishing at the same time the legal and factual framework, within which the substantive examination of the opposition in principle shall be conducted" (G 9/91, point 6 of the reasons)

While G 9/91 and G 10/91 were mainly concerned with the admissibility of late-filed grounds for opposition (and held that late-filed grounds should only be admitted is prima facie relevant), the case under appeal in T 1002/92 was concerned with late-filed evidence. In this context, the Board stated:

"It would be illogical to have one criterion for the admissibility of late-filed new facts, evidence and arguments in combination with a fresh ground, and a different criterion for judging the admissibility of late-filed new facts, evidence and arguments in support of a ground of opposition already covered by the opposition statement." (T 1002/93, point 3.2 of the reasons).

The Board finally concluded:

"Thus following the principles set out in opinion G 10/91, as regards proceedings before the opposition divisions, late- filed facts, evidence and related arguments, which go beyond the "indication of the facts, evidence and arguments" presented in the notice of opposition pursuant to Rule 55(c) EPC in support of the grounds of opposition on which the opposition is based, should only exceptionally be admitted into the proceedings by the opposition division if, prima facie, there are clear reasons to suspect that such late-filed material would prejudice the maintenance of the European patent in suit." (T 1002/92, point 3.3 of the reasons)

Regarding the proceedings before the Appeal Boards, T 1002/92 took an even stricter standpoint. They stated that - following the same principles, above -, the 

"'indication of the facts, evidence and arguments' presented in the notice of opposition in support of the grounds of opposition on which the opposition is based, should only very exceptionally be admitted into the [Appeal] proceedings, if such new material is prima facie highly relevant in the sense that it is highly likely to prejudice maintenance of the European patent in suit." (point 3.4 of the reasons; underling added)

Regarding the late-filed evidence in the case at hands, the Board found that it was not sufficiently relevant to be admitted at the late stage in the proceedings.

The evidence was hence not admitted.

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Headnote:

1. In proceedings before the opposition divisions, late-filed facts, evidence and related arguments, which go beyond the "indication of the facts, evidence and arguments" presented in the notice of opposition pursuant to Rule 55(c) EPC in support of the grounds of opposition on which the opposition is based, should only exceptionally be admitted into the proceedings if prima facie, there are clear reasons to suspect that such late-filed material would prejudice the maintenance of the European patent.
2. In proceedings before the boards of appeal, new facts, evidence and related arguments, which go beyond the "indication of facts, evidence and arguments" presented in the notice of opposition pursuant to Rule 55(c) EPC in support of the grounds of opposition on which the opposition is based, should only very exceptionally be admitted into the proceedings in the appropriate exercise of the board's discretion, if such new material is prima facie highly relevant in the sense that it can reasonably be expected to change the eventual result and is thus highly likely to prejudice maintenance of the European patent; and having regard also to other relevant factors in the case, in particular whether the patentee objects to the admissibility of the new material and the reasons for any such objection, and the degree of procedural complication that its admission is likely to cause.

The full text of the decision can be found here.

T 0002/83 - Problem-inventions / The "could-would" approach - #11

Citation rank: 11
No. of citations: 216

T 2/83 is known for two things: firstly, it confirmed that "problem inventions" exist, i.e., inventions that are based on the finding of a previously unrecognised technical problem, and which inventions involve an inventive step even though the solution to the problem appears obvious once the technical problem is formulated (Headnote I). Secondly, T 2/83 created the so-called "could-would" approach, which approach is used in the final step of the problem-solution approach, namely in the assessment of whether the solution to a technical problem proposed by a patent claim is obvious in view of the prior art.

Claim 1 under dispute related to a tablet containing simethicone and an antacid, the tablet comprising a first volume portion containing the simethicone on a solid carrier and a second volume portion containing said antacid. The claim further defined that the tablet had "barrier means" between the first and second volume portions for maintaining the simethicone in the first volume portion and out of contact with the antacid in the second volume portion, and for preventing migration of ingredients from one volume portion to another.

The applicant argued that, although it was known that simethicone may be readily released when adsorbed on a lactose filler material, its release turned out to be retarded or prevented when the material is contiguous to the antacid component. It appeared that simethicone migrates, against all expectations, from the adsorbed state into the solid antacid layer and becomes absorbed therein. Once this unknown problem has been discovered, the claimed solution (i.e., providing "barrier means" to prevent migration of components from one volume portion to another) was trivial.

The Board generally agreed. They confirmed that

"[t]he discovery of a yet unrecognised problem may, in certain circumstances, give rise to patentable subject- matter in spite of the fact that the claimed solution is retrospectively trivial and in itself obvious ("problem inventions")." (point 6 of the reasons)

They also agreed that the problem of migration of semeticone from one volume portion of the tablet to another was previously unrecognised. Regarding the question of whether the proposed solution to the technical problem proposed by the invention was obvious, the Board stated:

"The question regarding the inventive step, in relation to the modification of the layered tablet of the state of the art as suggested by the present applicants, is not whether the skilled man could have inserted a barrier between the layers but whether he would have done so in expectation of some improvement or advantage." (point 7 of the reasons; emphasis added)

In view of the fact that, in the underlying case, the problem of migration between volume portions of the tablet was previously not recognised as a problem, the skilled person could have introduced a barrier layer, but he did not have an incitement to do so. Hence, while the skilled person could have introduced the barrier layer, he would not necessarily have done so.

The Board concluded that claim 1 was based on inventive step.

The "could-would" approach is nowadays routinely applied in the assessment of inventive step by all instances of the EPO (see, e.g., Guidelines 2018, VII, 5.3).

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Headnote:

I. The discovery of an unrecognised problem may in certain circumstances give rise to patentable subject-matter in spite of the fact that the claimed solution is retrospectively trivial and in itself obvious ("problem-inventions").
II. In a case where the applicant had supplemented a known layered tablet by the provision of a barrier between the layers, the Board held that the proper question to be asked was not whether the skilled man could have provided the barrier but whether he would have done so in expectation of some improvement or advantage.

The full text of the decision can be found here.

T 0153/85 - Admissibility of late-filed requests / Criterion of "clear allowability" - #12

Citation rank: 12
No. of citations: 212

T 153/85 is concerned with the criteria to be applied by Boards of Appeal when they assess admissibility of late-filed requests in appeal proceedings. T 153/85 developed the criterion of "clear allowability" for the admissibility of such late-filed requests.

The appellant in this case had filed an appeal against the decision of the Examination Division refusing his patent application for lack of inventive step.

Claim 1 of the Main Request (claims as granted) related to an amorphous thermoplastic polymer defined by its structure. A first auxiliary request was filed in good time together with the Grounds of Appeal, in which the structure for the thermoplastic polymer was more narrowly defined. A second auxiliary claimed the use of the defined thermoplastic polymer "for the production of moulded articles". Three weeks before oral proceedings the appellant filed a third auxiliary request which included further limitations compared to the second auxiliary request.

During the oral proceedings the appellant filed a new Main Request, which included further amendments and was reduced to three claims, in response to the findings of the Board during the oral proceedings.

The Board had to decide whether the very late filed new Main Request was admissible. They stated:

"The admissibility of the main request raises a point of principle. In relation to appeal proceedings, the normal rule is as follows: If an appellant wishes that the allowability of the alternative set of claims, which differ in subject-matter rom those considered at first instance, should be considered (both in relation to Article 123 EPC and otherwise) by the Board of Appeal when deciding on the appeal, such alternative sets of claims should be filed with the grounds of appeal, or as soon as possible thereafter." (reasons 2.1)

The Board considered Articles 108, 110 and 111 EPC setting out the Appeal procedure, and the pertinent case law relating to it. In particular, from Art. 108 EPC ("a written statement setting out the grounds of appeal") they concluded that the appellant is required to set out in his grounds of appeal the reasons why the appeal should be allowed (reasons 2.1). They also took into account that the appeal procedure is designed to ensure that as far as possible the oral proceedings are brief and concentrated, and that the appeal is ready for decision at the conclusion of the oral proceedings (ibid.).

From these considerations they concluded that

"... a Board may justifiably refuse to consider alternative claims which have been filed at a very late stage, for example during the oral proceedings, if such alternative claims are not clearly allowable."

In line with this statement the Board refused to admit the Main Request, because it was filed late during oral proceedings without any proper justification, and also because the Board was of the opinion that the claims did not satisfy Article 52(1) EPC.

Nowadays the criterion of "clear allowability" for the admission of late-filed requests is routinely applied in the proceedings before the Examining Divisions, Opposition Divisions and Appeal Boards of the EPO (see, e.g., Guidelines 2018, H-II, 2.7.1 for examination, and E-VI, 2.1, 2.2 for opposition procedure).

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Headnote:

1. If an appellant desires that the allowability of alternative sets of claims should be considered in an appeal, such alternative claims should normally be filed with the statement of grounds of appeal or as soon as possible thereafter.
2. When deciding an appeal during oral proceedings, a Board of Appeal may refuse to consider alternative claims which have been filed at a late stage, e.g. during the oral proceedings, if such claims are not clearly allowable.
3. When assessing novelty, the disclosure of a prior document must be considered in isolation. It is only the actual content of a document (as understood by a skilled man) which destroys novelty.
4. A prior document may on its proper construction (i.e. when its meaning to the skilled man is determined) incorporate part or all of a second prior document into its disclosure, by specific reference to the second document.

The full text of the decision can be found here.

Quotes from decisions citing T 153/85 can be found here.

T 0409/91 - Sufficiency of disclosure vs. support by the desciption - #13

Citation rank: 13
No. of citations: 205

T 409/91 looked at the relationship between sufficiency of disclosure (Art. 83) and support by the description (Art. 84). It found that both are interrelated, because they both express the same principle, namely that the scope of protection should be commensurate with the contribution that the invention makes to the prior art (point 3.5 of the reasons).

Claim 1 of the application in dispute read:

"Distillate fuel oil boiling in the range 120 C to 500 C which has a wax content of at least 0.3 weight% at a temperature of 10 C below the Wax Appearance Temperature, the wax crystals at that temperature having an average particle size less than 4000 nanometres."

Claims 2 to 5 defined smaller upper limits of the particle size down to 1000 nanometres. It was claimed by the applicant that the small size of the wax crystals reduced the undesired "cold clogging" otherwise observed with wax crystals in fuel oils.

Only one way of obtaining "wax crystals at that temperature having an average particle size less than 4000 nanometers" was disclosed in the application as-filed, namely a process which produced wax particles having an average particle size of 1200 nm. No way of obtaining wax crystals of 1000 nm (as claimed in claim 5) was disclosed.

The Examination Division refused the application for two reasons: Firstly they found that claim 1 was insufficiently disclosed, because the invention could not be carried out within the whole area claimed, i.e., no method was disclosed yielding a particle size of less than 1200 nm. Secondly, the Examination considered that the claim did not meet the requirement of Art. 84, first sentence, in combination with Rule 29(1) EPC1973 (now Rule 43(1)), so that the claim as a whole did not define (state all the essential elements of) the matter for which protection was sought (i.e. the fuel oil) in terms of technical features.

The Appeal Board analysed the application and concluded that for obtaining the inventive small wax crystals, the presence of certain "additives", which were disclosed in the description and present in all of the "examples", were indeed necessary to obtain the inventive small wax crystals. The Board hence considered the presence of such additives was an "essential feature" of the invention, which was missing in the claims. With reference to T 133/85 they stated that a technical feature which is described and highlighted in the description as being an essential feature of the invention, must also be a part of the independent claim or claims defining this invention (point 3.3 of the reasons). The claims thus infringed Art. 84 EPC.

The Board also found that the claims lacked sufficiency of disclosure (Art. 83) for very similar reasons. The Board stated:

"Although the requirements of Article 83 and Article 84 are directed to different parts of the patent application, since Article 83 relates to the disclosure of the invention, whilst Article 84 deals with the definition of the invention by the claims, the underlying purpose of the requirement of support by the description, insofar as its substantive aspect is concerned, and of the requirement of sufficient disclosure is the same, namely to ensure that the patent monopoly should be justified by the actual technical contribution to the art." (point 3.5 of the reasons)

The Board judged that the reasons why the claims were insufficiently disclosed in this case were in effect the same as those that lead to their infringing Art. 84 EPC, namely that the invention extends to technical subject-matter not made available to the person skilled in the art by the application as filed,. In particular, as was not contested by the appellant, no information was given to perform the claimed invention successfully without using the structurally defined "additives".

The Applicant argued that the claims were sufficiently disclosed, for the reason alone that the application disclosed one way of carrying out the invention. However, the Board did not accept this. They stated:

"... the Board does not accept the appellant's submission that sufficiency should be acknowledged simply because one way of performing the invention was disclosed. In the Board's judgement, the disclosure of one way of performing the invention is only sufficient within the meaning of Article 83 EPC if it allows the person skilled in the art to perform the invention in the whole range that is claimed ...".

As a consequence, the appeal was dismissed.

Remark: It remarkable that the Board in this case considered the invention to be insufficiently disclosed, although the required features for obtaining the small wax crystals (i.e., the required "additives") were disclosed in the description. The argument frequently made by applicants and proprietors, that it is sufficient for complying with Art. 83 that the description taught how to carry out the invention, is hence not always correct. If essential features are missing in a claim, the claim effectively extends to embodiments that are not accessible with the information given in the patent/application (namely those embodiments that do not employ the essential features), and therefore the invention as defined by the claims - as a whole - is insufficiently disclosed.

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Headnote:

The questions of sufficiency and of support by the description are questions of fact which have to be answered on the basis of the available evidence having regard to the balance of probabilities in each individual case. Although the requirements of sufficient disclosure of the invention (Art. 83 EPC) and support by the description (Art. 84 EPC) are related to different parts of the patent application, they give effect to the same legal principle that the patent monopoly should be justified by the technical contribution to the art. Therefore, the extent to which an invention is sufficiently disclosed is also highly relevant for the answer to the question of support (points 3.3 to 3.5 of the Reasons).

The full text of the decision can be found here.


Quotes from decisions citing T 409/91 can be found here.

T 0939/92 - Technical effect "over the whole area claimed" - Triazoles/AGREVO - #14

Citation rank: 14
No. of citations: 198

T 939/92 ("AGREVO") looked at the relationship between the contribution to the art and scope of claims and its bearing on the assessment of inventive step.

Claim 1 in the underlying examination case related to broadly defined triazole compounds. It was asserted by the applicant that the claimed triazole compounds had herbicidal activity. The Examining Division had refused the application for lack of support (Art. 84). In particular, they were of the opinion that the scope of the claims did not represent a reasonable generalisation of the examples provided in the description.

Also the Appeal Board found that the claims were unreasonably broad. They also questioned that the application documents contained sufficient internal evidence to render it credible that all claimed compounds would have the stated herbicidal activity. They also agreed with the Examining Division that the claim feature defining a residue "R3" as "optionally substituted phenyl" meant that the phenyl of R3 could be "substituted by absolutely anything" (point 6 of the decision under appeal).

While the Examining Division concluded that the claim lacked support (Art. 84), the Board stated that it does not follow from Article 84 EPC that a claim is objectionable simply because it is "unreasonably broad" (cf. Headnote I). The Board found that the claim was supported by the description, but saw problems regarding inventive step. In this context, they stated:

"2.4.2 The reason for this is that it has for long been a generally accepted legal principle that the extent of the patent monopoly should correspond to and be justified by the technical contribution to the art (see T 409/91, OJ EPO 1994, 653 , reasons Nos. 3.3. and 3.4, and T 435/91, OJ EPO 1995, 188, reasons Nos. 2.2.1 and 2.2.2). Now, whereas in both the above decisions this general legal principle was applied in relation to the extent of the patent protection that was justified by reference to the requirements of Articles 83 and 84 EPC, the same legal principle also governs the decision that is required to be made under Article 56 EPC, for everything falling within a valid claim has to be inventive. If this is not the case, the claim must be amended so as to exclude obvious subject-matter in order to justify the monopoly."

In the case of the triazole compounds of claim 1, the applicant could only demonstrate herbicidal activity of some of the compounds falling under claim 1. In all of those compounds for which herbicidal activity was shown, R3 was a phenyl substituted by halogen atoms or methyl groups. On the basis of this evidence, the Board was not satisfied that substantially all compounds now being claimed are likely to be herbicidally active (point 2.7 of the reasons).

The Board concluded that, because it was not demonstrated that the technical effect, on which the invention relied, existed over the whole area claimed, claim 1 lacked inventive step. (This reasoning is now often used by opponents in chemical opposition cases, and commonly referred to as the "Agrevo" argument.)

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Headnote:

1. If a claim concerns a group of chemical compounds per se, an objection of lack of support by the description pursuant to Article 84 EPC cannot properly be raised for the sole reason that the description does not contain sufficient information in order to make it credible that an alleged technical effect (which is not, however, a part of the definition of the claimed compounds) is obtained by all the compounds claimed (see Reasons No. 2.2.2).
2. The question as to whether or not such a technical effect is achieved by all the chemical compounds covered by such a claim may properly arise under Article 56 EPC, if this technical effect turns out to be the sole reason for the alleged inventiveness of these compounds (Reasons Nos. 2.4 to 2.6).

The full text of the decision can be accessed here. 

T 0301/87 - Clarity in opposition proceedings (pre-G 3/14) - #15

Citation rank: 15
No. of citations: 191

T 301/87 is one of many decisions concerned with the question of whether and to what extent clarity objections can be examined in opposition. It represents one of two "diverging" schools of case law, which were considered by the Enlarged Board of Appeal when they looked at the same question in G 3/14. G 3/14 ultimately followed the approach taken by T 301/87, i.e., that clarity objections are to be examined only if the clarity objections arise out of the amendments made during opposition. (G 3/14 added an additional restriction to the examination of clarity objections in opposition, namely that the clarity objection can only be examined to the extent that the clarity objection arises from the amendment.)

Consideration was given in T 301/87 (and G 3/14) to the fact that, on the one hand, clarity is not included in the (exhaustive) list of grounds for opposition of Art. 100 EPC, but Art. 101(3) requires that the opposition division considers whether the amended patent "meets the requirements of [the EPC]" (with no reference to Art. 100 EPC).

T 301/87 appears still valid after publication of G 3/14, but G 3/14 of course carries more weight and is nowadays the decision to be cited. G 3/14 (rank #16 in the list of most-cited Board of Appeal decisions) has recently been summarised in this blog here.

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Headnote:

1. When amendments are made to a patent during an opposition, Article 102(3) EPC requires consideration as to whether the amendments introduce any contravention of any requirement of the Convention, including Article 84 EPC; Article 102(3) EPC does not allow objections to be based upon Article 84 EPC, if such objections do not arise out of the amendments made (further to T 227/88, dated 15 December 1988) (cf. Point 3.7 of the reasons)

[...]

 The full text of the decision can be found here.

G 0003/14 - Clarity in oppostion proceedings - #16

Citation rank: 16
No. of citations: 186

G 3/14 ranks #16 on the list of the 100 most-cited Boards of Appeal decisions of all times, but it is certainly record-holder in terms of citations per year! (see graph right/above)

The decision is concerned with the question of how the requirement of the EPC that a claim should be clear, concise and supported by the description (Art. 84 EPC) is to be treated in opposition and opposition-appeal.

The question arises from the fact that Art. 100 EPC limits the available grounds of opposition to the ones listed in that Article (and Art. 84 is not among them), but Art. 101(3)(b) on the other hand states an opposition must revoke a patent which has been amended in opposition and no longer "meets the requirements of [the EPC]".

The case law concerning the question was divergent. Some Boards were of the opinion that clarity objections against amended claims are to be examined in opposition only to the extent that the clarity objections result from the amendment(s) (e.g., T 301/87). Other Boards, starting with T 1459/05, allowed opposition divisions more flexibility. In the most flexible approach, the power of an opposition division to examine clarity objections against amended claims was unrestricted.

In deciding the questions referred to it, the Enlarged Board considered the wording of Art. 101(3) EPC, which - in relation to amended patents - refers to "the requirements of this Convention" and not only to the grounds of oppositions mentioned in Art. 100 EPC. The fact that the grounds available for opposition are deliberately limited by the EPC to the ones listed in Art. 100(a), (b) and (c) was also taken into account.

After a detailed analysis of the earlier case law and of the text of the EPC, the Enlarged Board came to the conclusion that under Art. 100 and 101(3) EPC, the power of Opposition Divisions (and of Appeal Boards) to examine amended claims under clarity is limited to cases where, and to the extent that, the clarity objections arise from the amendment(s).

Under this concept, e.g., when an opposed patent is amended by inclusion of the features of a dependent claim into the independent claim, a clarity issue, which already existed in the unamended dependent claim, cannot be examined by the Opposition Division.

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Headnote:

In considering whether, for the purposes of Article 101(3) EPC, a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC.

The full text of the decision can be found here.

T 0219/83 - Burden of proof / Benefit of doubt - #17

Citation rank: 17
No. of citations: 174

T 219/83 is concerned with issues of proof. In particular, T 219/83 looks at a situation where parties to opposition-appeal proceedings make contrary assertions, and the Board is unable to establish which party is right.

Claim 1 of the contested patent related to a process for the manufacture of a zeolite from silicon dioxide and metal oxides, characterized (i.a.) in that the crystallization is carried out in the absence of an alkali metal. Claim 4 related to zeolites produced by the process of claim 1.

Regarding the product-by-process claim 4, the proprietor asserted that at the time of filing the patent application, no methods were available to produce zeolites having as low an alkali content as obtained by the claimed process. The claimed product would thus be new. They drew attention to their own unsuccessful attempts to remove residual alkali from known zeolites with a higher alkali content by repeated ion exchange.

The opponents, on the other hand, stated the opposite: they asserted that available methods were able to produce zeolites of a low alkali content, as claimed. Although they disputed the contention that there was no way of removing the residual alkali they had not been able to indicate a specific method suited to this purpose, or even to suggest the bare outlines of such a method.

The Board noted that they themselves were unable to establish whether or not such methods existed. They stated in this regard:

"It is true that under Article 114(1) EPC the European Patent Office, in proceedings before it, examines the facts of its own motion and is not restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. But if the European Patent Office is unable to establish the facts of its own motion, it is the party whose argument rests on these alleged facts who loses thereby. This is the situation here. The two parties have made contrary assertions concerning the desired elimination of alkali. In such cases the ruling goes against the opponent as appellant if he is unable to substantiate an assertion which could disprove the existence of an inventive step. It was up to the opponents to name a method in the state of the art whereby it was possible prior to the filing date to prepare by other means zeolites free of alkali to the same degree as those in the patent in question. The opponents were unable to name any such method; nor is the Board aware of one. Accordingly, the opponents' assertion can only be treated as an unproven supposition which cannot counter the assumption that the granted European patent involves an inventive step." (point 12 of the reasons)

In other words, the burden of proof for the assertion that prior art methods were unable to produce zeolites with a low alkali content thus lay with the opponents. They did not provide the necessary proof, thus, the benefit of doubt had to be given to the patentee.

The patent was thus maintained (in slightly amended form).

Remark: I have no good explanation why the number of citations dropped significantly around 2007. At least Headnote I (see below) seems equally valid under the EPC1973 and today. The decision is also still cited in the Case Law Book (2016, chapter III.G.5.1.1).

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Headnote:

I. If the parties to opposition proceedings make contrary assertions which they cannot substantiate and the European Patent Office is unable to establish the facts of its own motion, the patent proprietor is given the benefit of the doubt.

2. After oral appeal proceedings in connection with an opposition, the parties must be informed and invited to state their observations concerning the maintenance of the European patent in the amended form within a period of one month in accordance with Rule 58(4) EPC only, if they cannot reasonably be expected to do so definitively during the oral proceedings.

The full text of the decision can be found here.

Quotes from decisions citing T 219/83 can be found here.

G 0007/93 - Review of first-instance discretionary decisions ("Late amendments") - #18

Citation rank: 18
No. of citations: 173

G 7/93 is primarily concerned with two provisions of the EPC1973, both of which no longer exist under the EPC2000. G 7/93 looked at the question whether late amendments may be allowed by an examining division after formal approval of the text proposed for grant under an old version of Rule 51(4) and (6) EPC1973. A second part of G 7/93 deals with "Reservations" of contracting states under Art. 167 EPC1973, which also no longer exist.

Given that G 7/93 deals with provisions that no longer exist under the EPC2000, it is surprising to see a steep increase in citations of G 7/93 after the EPC2000 came into force (see graph at top right).

It turns out that G 7/93 is nowadays no longer cited for its comments on Rule 51 and Art. 167 EPC1973. Instead, the decision is cited for its general comments on how the EPO's first instance departments are to exercise their "discretion"- if they have it - and to what extent an Appeal Board can review the discretionary decisions of the first instance.

In this context, the Enlarged Board in G 7/93 stated:

"It may be added that if an Examining Division has exercised its discretion [to allow or not to allow further amendments after formal approval was given by applicant to the text proposed for grant] under Rule 86(3) EPC against an applicant in a particular case and the applicant files an appeal against the way in which such discretion was exercised, it is not the function of a Board of Appeal to review all the facts and circumstances of the case as if it were in the place of the first instance department, in order to decide whether or not it would have exercised such discretion in the same way as the first instance department. If a first instance department is required under the EPC to exercise its discretion in certain circumstances, such a department should have a certain degree of freedom when exercising that discretion, without interference from the Boards of Appeal. In the circumstances of a case such as that before the referring Board, a Board of Appeal should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles as set out in paragraph 2.5 above, or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion." (point 2.6 of the reasons)

Following this statement by the Enlarged Board of Appeal, the Appeal Boards nowadays only review discretionary decisions of first-instance departments to the extent that it is assessed whether the deciding body exercised its discretion "in accordance with the right principles, or in an unreasonable way". A Board of Appeal should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles or that it has exercised its discretion in an unreasonable way (see, e.g., T 2355/09, citing G 7/93).

Most discretionary decisions of the first-instance departments reviewed by the Boards in this manner are decisions on whether or not to allow late-filed requests, documents and/or new grounds in opposition proceedings. Such discretionary decisions are reviewed by Boards of Appeal only to the limited extent described above.

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Headnote:

1. An approval of a notified text submitted by an applicant pursuant to Rule 51(4) EPC does not become binding once a communication in accordance with Rule 51(6) EPC has been issued. Following issue of such a communication under Rule 51(6) EPC and until issue of a decision to grant the patent, the Examining Division has a discretion under Rule 86(3), second sentence, EPC, whether or not to allow amendment of the application.
2. When exercising such discretion following issue of a communication under Rule 51(6) EPC, an Examining Division must consider all relevant factors. In particular it must consider and balance the applicant's interest in obtaining a patent which is legally valid in all of the designated States, and the EPO's interest in bringing the examination procedure to a close by the issue of a decision to grant the patent. Having regard to the object underlying the issue of a communication under Rule 51(6) EPC, which is to conclude the granting procedure on the basis of the previously approved text, the allowance of a request for amendment at that late stage in the granting procedure will be an exception rather than the rule.
3.Reservations under Article 167(2) EPC do not constitute requirements of the EPC which have to be met according to Article 96(2) EPC.

The full text of the decision can be found here.

Quotes from decisions citing G 7/93 can be found here.

G 0004/92 - Basis of decisions / Right to be heard - #19

Citation rank: 19
No. of citations: 166

G 4/92 is concerned with the question of whether or not a decision against a party which is absent from the oral proceedings can be announced at the end of the oral proceedings, if the decision is based on facts and evidence, such as documents, presented for the first time during the oral proceedings.

The case law regarding this question had been divergent:

Decision T 574/89 held that by choosing to stay away from oral proceedings the parties "had forfeited their right to present comments", and hence that "any arguments or evidence submitted by the parties present at oral proceedings" could "be used as a basis for the decision without it being relevant whether such evidence or arguments were already known to the absent parties from the written submissions or whether they could expect such evidence or arguments to be presented".

T 484/90, on the other hand, held that "a decision against a party duly summoned to but failing to appear at oral proceedings which is based on new evidence, such as a new document, on which that party has not had the opportunity to comment, may not be pronounced at the close of those proceedings without infringing that party's right to be heard, unless the absent party indicates that it is forfeiting this right".

When considering the answer to the question, the Enlarged Board firstly considered that the right to be heard, as implemented by Art. 113(1) EPC, was a fundamental right of parties to proceedings before the EPO (point 2 of the reasons).

The Enlarged Board secondly considered Rule 71(2) EPC1973 (now R. 115(2) EPC), which states that, if a party who has been duly summoned to oral proceedings does not appear as summoned, the proceedings may continue without the party. The Enlarged Board considered that no party should be allowed to delay the issue of a decision by failing to appear at the oral proceedings (point 4 of the reasons).

Thirdly, the Enlarged Board considered that a party should not wait until oral proceedings before presenting new facts or evidence that could have been submitted earlier. This would constitute an abuse of procedure which should be sanctioned by disregarding such matter in accordance with Article 114(2) EPC (point 7 of the reasons).

In weighing the above considerations the Enlarged Board came to the conclusion that a decision may be taken during oral proceedings, also in the absence of a duly summoned party, if the decision is not based on facts put forward for the first time during oral proceedings. The latter would infringe the absent party's right to be heard (Art. 113(1) EPC).

New arguments presented for the first time at oral proceedings were seen less critical. A decision could based on such new arguments, because arguments are not "grounds or evidence" as recited in Art. 113 EPC. Arguments are merely reasons based on the "facts and evidence " which have already been put forward (point 10 of the reasons).

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Headnote:

1. A decision against a party who has been duly summoned but who fails to appear at oral proceedings may not be based on facts put forward for the first time during those oral proceedings.
2. Similarly, new evidence may not be considered unless it has been previously notified and it merely supports the assertions of the party who submits it, whereas new arguments may in principle be used to support the reasons for the decision.

The full text of the decision can be accessed here.

 Quotes from decisions citing G 4/92 can be found here.