tag:blogger.com,1999:blog-36595371202534926942024-03-05T16:03:31.227+01:00100mostcitedThe EPO Boards of Appeal's 100 most cited decisions of all timesUnknownnoreply@blogger.comBlogger102125tag:blogger.com,1999:blog-3659537120253492694.post-36035621319136517652020-12-06T14:34:00.003+01:002020-12-06T14:36:43.443+01:00New EPC case law blog<p>Check out my new EPC case law blog under: <br /></p><p><a href="https://epcdigest.blogspot.com/">https://epcdigest.blogspot.com/</a></p>Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-3659537120253492694.post-13316757584310670662018-12-30T13:42:00.001+01:002019-07-26T07:56:11.070+02:00G 0009/91 - Power to examine - #1<div class="separator" style="clear: both; text-align: center;">
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Citation rank: 1<br />
No. of citations: 709<br />
<br />
The most-cited decision of a Board of Appeal ever,<b> G 9/91</b>, is concerned with the question of whether Opposition Divisions and Appeal Boards have power to examine parts of the patent (<i>i.e.</i>, claims), which were not attacked in the initial Notice of Opposition.<br />
<b></b><br />
<b>G 9/91</b> was decided by the Enlarged Board in consolidated proceedings with <b>G 10/01</b>. The latter decision looked at a related problem, namely at the question whether Opposition Divisions and Appeal Boards have power to examine Grounds of Opposition (Art. 100(a)-100(c)
EPC), which where not raised by opponents within the 9 months opposition period (a brief summary of <b>G 10/91</b> can be found <a href="https://100mostcited.blogspot.com/2018/12/g-001091-examination-of-opposition.html" target="_blank">here</a>).<br />
<br />
The claims underlying the referral in <b>G 9/91</b> were directed to certain <i>anhydride </i>polymers, certain <i>imide </i>polymers, as well as to processes for preparing them. Only the claims relating to the anhydride polymers (not the ones to the imide polymers) were attacked by the opponent. Upon appeal, however,
the opponent/appellant also raised objections against the originally
non-attacked imide polymer claims. The patentee then offered to dispose of the appeal by deleting Claims 9-11 relating to anhydride polymers. He argued that the Board should not express any opinion on the unopposed Claims 1-8 relating to imide polymers, because this would entail an <i>ex officio </i>examination contrary to Art. 114(1) EPC as interpreted in case <b>T 9/87</b>. <br />
<br />
Hence, the question whether an Opposition Division or an Appeal Board had the power to examine originally unopposed claims arose. This question was considered an important point of law within the meaning of Article 112(1)(a) EPC by the Technical Board. It
thus referred the following questions to the
Enlarged Board of Appeal (<b>G 9/91</b>):<br />
<blockquote class="tr_bq">
1. Is the power of an Opposition Division or, by reason of Rule 66(1)
EPC[1973], of a Board of Appeal to examine and decide on the maintenance of a
European patent under Articles 101 and 102 EPC[1973] dependent upon the
extent to which the patent is opposed in the notice of opposition
pursuant to Rule 55(c) EPC[1973]? </blockquote>
<blockquote class="tr_bq">
2. If the answer to the first question should be affirmative, are there any exceptions to such dependence?</blockquote>
When approaching these questions, the Enlarged Board found it important to note that the opposition procedure under the EPC is a post-grant procedure.They stated:<br />
<blockquote class="tr_bq">
"It is inherent in any post-grant opposition procedure that the patent office cannot take any action in respect of a granted patent, however clear it may have become after grant that the patent is invalid, unless initiated by an admissible opposition. If no opposition is filed, the patent can only be attacked in revocation proceedings before a national court. In other words: the competence of the patent office to deal with the patent depends on the action taken by the opponent." (point 3 of the reasons)</blockquote>
The Enlarged Board also took into account that it was a requirement for filing admissible oppositions, that the Notice of Opposition contains, <i>i.a.</i>, a statement of the extent to which the European patent is opposed (R. 55(c) EPC1973, now R. 76(2)(c)). The Enlarged Board considered that Rule 55(c) only made sense if it was<br />
<blockquote class="tr_bq">
"... interpreted as having the double function of governing (together with 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." (point 6 of the reasons)</blockquote>
<br />
The Enlarged Board also considered the previous case law on the issue. They generally agreed with what was said in <b>T 9/87</b>. The requirements of R. 55(c) EPC1973 to specify the extent to which the patent is opposed within the opposition time limit would be pointless if later on other parts of the patent than those so opposed could freely be drawn into the proceedings (point 10 of the reasons). This would also be contrary to the basic concept of post-grant opposition under the EPC (<i>ibid.</i>).<br />
<br />
The Enlarged Board concluded that question 1, above, had to be answered in the affirmative: An Opposition Division or Appeal Board cannot examine unopposed claims which were not attacked during the opposition period. With one exception, though: With reference to <b>T 293/88</b>, the Enlarged Board held that the subject-matter of a dependent claim may be examined as to patentability, if the dependent claim depends from an independent claim which falls in opposition or appeal, provided that the dependent claim's validity is <i>prima facie </i>in doubt on the basis of already available information. The Enlarged Board considered that such dependent subject-matters had to be considered as being implicitly covered by the statement under Rule 55(c) EPC1973.<br />
<br />
---<br />
<br />
<b>Headnote</b>:<br />
<blockquote class="tr_bq">
The power of an Opposition Division or a Board of Appeal to examine and
decide on the maintenance of a European patent under Articles 101 and
102 EPC depends upon the extent to which the patent is opposed in the
notice of opposition pursuant to Rule 55(c) EPC. However,
subject-matters of claims depending on an independent claim, which falls
in opposition or appeal proceedings, may be examined as to their
patentability even if they have not been explicitly opposed, provided
their validity is prima facie in doubt on the basis of already available
information.</blockquote>
The full text of the decision can be accessed <a href="https://www.epo.org/law-practice/case-law-appeals/recent/g910009ep1.html" target="_blank">here</a>.<br />
<br />
Quotes from 10 decisions citing G 9/91 can be found <a href="https://100mostcited.blogspot.com/p/blog-page_26.html" target="_blank">here</a>. Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-3659537120253492694.post-91476453442369642032018-12-29T10:36:00.002+01:002019-07-26T08:06:15.301+02:00G 0010/91 - Examination of opposition-appeals - #2<div class="separator" style="clear: both; text-align: center;">
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Citation rank: 2<br />
No. of citations: 665<br />
<br />
<b>G 10/91</b> (in consolidated proceedings with <b>G 9/01</b>) is concerned with the character and nature of the opposition and opposition-appeal proceedings. Both G decisions defined powers of Opposition Divisions and Appeal Boards to examine the case. While <b>G 9/91 </b>was concerned with the question of which parts (<i>i.e.</i>, which claims) of the contested patent may be examined, <b>G 10/91</b> looked at the Grounds of Opposition, as provided in Art. 100(a)-(c) EPC, which may be considered by the Opposition Division or Board.<br />
<br />
In the underlying case leading to the referral (<b>T 580/89</b>), only certain claims of the opposed patent were actually opposed (namely, under Art. 100(a) EPC). Other claims were not attacked. Also, no other Grounds of Opposition than Art. 100(a) was raised. Upon appeal, however, the opponent then also raised objections against the originally non-attacked claims. Furthermore, in the course of the appeal proceedings a third party
filed observations under Art. 115 EPC, submitting that the
subject-matter relating to all claims was not
patentable due to lack of novelty and inventive step. <br />
<br />
In this situation the the question arose whether the originally non-attacked claims may be examined by the Board, despite the fact that the original opposition did not concern these claims. The Board found that this the question was an
important point of law within the meaning of Article 112(1)(a) EPC. It thus referred the following questions to the
Enlarged Board of Appeal (reference number <b>G 9/91</b>):<br />
<blockquote class="tr_bq">
1. Is the power of an Opposition Division or, by reason of Rule 66(1)
EPC, of a Board of Appeal to examine and decide on the maintenance of a
European patent under Articles 101 and 102 EPC dependent upon the
extent to which the patent is opposed in the notice of opposition
pursuant to Rule 55(c) EPC? </blockquote>
<blockquote class="tr_bq">
2. If the answer to the first question should be affirmative, are there any exceptions to such dependence?</blockquote>
At that stage, the President of the EPO, making use of his power
under Article 112(1)(b) EPC, referred the following question to the
Enlarged Board of Appeal (reference number <b>G 10/91</b>):<br />
<blockquote class="tr_bq">
Is the Opposition
Division in the examination of the opposition obliged to consider all
the grounds for opposition referred to in Article 100 EPC or is this
examination restricted to the grounds referred to by the opponent in his
statement of grounds of opposition?</blockquote>
The Enlarged Board of Appeal considered that the questions referred by the Technical Board and by the President concerned related issues, and should therefore be treated in consolidated proceedings. Hence, the Facts and Submissions, as well as the Reasons for the Decision in <b>G 9/91</b> and <b>G 10/91</b> are the same. The orders of the respective decisions, however, relate to the specific questions referred to the Enlarged Board in the respective case.<br />
<br />
In deciding case <b>G 10/91</b>, the Enlarged Board first noted that the questions referred to in <b>G 9/91 </b>and <b>G 10/91</b> were, although related, in fact rather different: The question of which parts of the patent can be examined (<b>G 9/91</b>) concerned the formal competence of the Opposition Division/Appeal Boards to examine, whereas the question referred in <b>G 10/91</b> related to the <i>procedural principles </i>applicable in the respective procedures (point 12 of the reasons).<br />
<br />
Regarding the question which Grounds for Opposition may be examined (<b>G 10/91</b>), the case law was divergent. For example, in <b>T 493/88</b> it was held that Art. 101 and 102 EPC1973 (now Art. 101 EPC) clearly referred to <i>all</i> Grounds for Opposition and does not limit the scope of examination by the Opposition Division. <b>T 182/89</b>, on the other hand, held that Art. 114 EPC (<i>ex officio </i>examination) should <i>not</i> be interpreted as requiring an Opposition Division or Appeal Board to examine Grounds of Opposition that were not raised by opponents within the 9 months opposition time limit.<br />
<br />
The Enlarged Board found that the approach taken in <b>T 182/89</b> was more in line with the concept of <i>post-grant</i> opposition proceedings, as present under the EPC. They also mentioned "procedural expediency" as a positive side effect (point 14 of the reasons). Ultimately, they decided that Opposition Divisions and Appeal Boards were not <i>required </i>to examine Grounds of Opposition not raised in the Notice of Oppostion.<br />
<br />
A crucial point to be decided was, however, whether an Opposition Division/Board <i>may </i>examine such Grounds, <i>i.e.</i>, whether Art. 114(1) EPC <i>empowers </i>an Opposition Division or Appeal Board to examine Grounds for Opposion not raised in the Notice of Opposition.<br />
<br />
In this regard, the Enlarged Board noted that it was common practice before the EPC that the principle of <i>ex officio </i>examination also applied in opposition proceedings (point 16 of the reasons). This was also refleted in the traveaux preparatoires (BR 87/71, point 9). The Enlarged Board found that there was no reason to change the established practice. The current practice helped avoiding maintenance of patents in opposition which were invalid.<br />
<br />
The Enlarged Board thus stated:<br />
<blockquote class="tr_bq">
"[A]n Opposition Division may, in application of Article 114(1) EPC, of its own motion raise a ground for opposition not covered by the statement pursuant to Rule 55(c) EPC or consider such a ground raised by the opponent (or referred to by a third party under Article 115 EPC) after the expiry of the time limit laid down in Article 99 (1) EPC. At the same time, the Enlarged Board would like to emphasise that the consideration of grounds not properly covered by the statement pursuant to Rule 55(c) EPC, as an exception to the principle established by the Board in paragraph 6 above, should only take place before the Opposition Division in cases where, <i>prima facie</i>, there are clear reasons to believe that such grounds are relevant and would in whole or in part prejudice the maintenance of the European patent." (point 16 of the reasons)</blockquote>
In appeal proceedings, this did not apply. The Enlarged Board stated that appeal proceedings were a judicial review procedure and thus less investigative by nature. Therefore, Art. 114(1) EPC (<i>ex officio </i>examination) should be applied in a more restrictive manner. Grounds of Opposition not raised in the initial Notice of Oppostion may not be examined by Appeal Boards. The Enlarged Board allowed one exception, however: "<i>volenti non fit injuria</i>" (latin: "to a willing person, injury is not done"). Hence, fresh Grounds may be examined by a Board in appeal proceedings, if the proprietor agrees. Otherwise, if the patentee does not agree to the introduction of a fresh ground for opposition, such a ground may not be dealt with in substance in the decision of the Board of Appeal at all. Only the fact that the question has been raised may be mentioned (point 18 of the reasons).<br />
<br />
Finally, the Enlarged Board confirmed that the above restrictions to the examination of Grounds for Opposition only apply to the claims as granted. Any amendment introduced during the opposition or appeal proceedings must be fully examined as to its compatibility with the requirements of the EPC, <i>e.g.</i>, also with regard to the provisions of Article 123(2) and (3) EPC (point 19 of the reasons).<br />
<br />
<u>Remark:</u> See <b>G 3/14</b> for examination of clarity objections in opposition and opposition-appeal proceedings. A brief summary of <b>G 3/14</b> can be found <a href="https://100mostcited.blogspot.com/2018/11/g-000314-clarity-in-oppostion.html" target="_blank">here</a>.<br />
<br />
---<br />
<br />
<b>Headnote</b>:<br />
<blockquote class="tr_bq">
1. An Opposition Division or a Board of Appeal is not obliged to
consider all the grounds for opposition referred to in Article 100 EPC,
going beyond the grounds covered by the statement under Rule 55(c) EPC. </blockquote>
<blockquote class="tr_bq">
2. In principle, the Opposition Division shall examine only such
grounds for opposition which have been properly submitted and
substantiated in accordance with Article 99(1) in conjunction with Rule
55(c) EPC. Exceptionally, the Opposition Division may in application of
Article 114(1) EPC consider other grounds for opposition which, prima
facie, in whole or in part would seem to prejudice the maintenance of
the European patent. </blockquote>
<blockquote class="tr_bq">
3. Fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee.</blockquote>
The full text of <b>G 10/91</b> can be found <a href="https://www.epo.org/law-practice/case-law-appeals/recent/g910010ep1.html" target="_blank">here</a>.<br />
<br />
Quotes from 10 decisions citing G 10/91 can be found <a href="https://100mostcited.blogspot.com/p/blog-page_94.html" target="_blank">here</a>. Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-3659537120253492694.post-8591758060045735982018-12-21T08:54:00.000+01:002018-12-26T13:06:41.651+01:00G 0002/88 - Second non-medical indication / "Friction-reducing additive"- #3<div class="separator" style="clear: both; text-align: center;">
<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEggX7IpE34ubqfHi6FDITam7_HDu9X92in43kr4LarFIp4HBJWCN6fl5wC6p9bnLgtY2Wide0-dxKGtqfoiKq7ih-Fo-I-cpyOEONgCeI0d9G3XL6sNSbFP4cEHHTEwAko58OAe0IHxS9A/s1600/plot3.jpg" imageanchor="1" style="clear: right; float: right; margin-bottom: 1em; margin-left: 1em;"><img border="0" data-original-height="900" data-original-width="1200" height="240" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEggX7IpE34ubqfHi6FDITam7_HDu9X92in43kr4LarFIp4HBJWCN6fl5wC6p9bnLgtY2Wide0-dxKGtqfoiKq7ih-Fo-I-cpyOEONgCeI0d9G3XL6sNSbFP4cEHHTEwAko58OAe0IHxS9A/s320/plot3.jpg" width="320" /></a></div>
Citation rank: 3<br />
No. of citations: 368<br />
<br />
<b>G 2/88</b> ("Friction reducing additive") and <b>G 6/88</b> ("Plant growth regulating agent") both looked at changes in the claim category from product claim (specifically: compound or composition) to use claim, namely the use of the compound or composition for a particular purpose.<br />
<br />
A Technical Board of Appeal in <b>T 59/87</b> referred the question to the Enlarged Board of Appeal whether a patent with claims directed to a "compound" and to a "composition
including such compound" can be amended during opposition proceedings so
that the claims are directed to the "use of that compound in a
composition" for a particular purpose, without extending the scope of protection (Art. 123(3) EPC).<br />
<br />
The Enlarged Board
found that, upon proper interpretation of Art. 123(3) EPC, and taking
into account the "absolute" protection that a product claim confers, a
change in category from product to use of the product does <u>not</u> normally extend the scope of protection. Art. 123(3) would thus not be infringed.<br />
<br />
<b>T 59/87</b> also referred another question to the Enlarged Board, namely whether novelty can be acknowldedged of a claim claiming the use of a known compound for a particular purpose over prior art disclosing the same use of the same compound, but for a <i>different </i>purpose. Specifically <b>T 59/87 </b>asked:<br />
<blockquote class="tr_bq">
"Is a claim to the use of a compound for a particular non-medical purpose
novel for the purpose of Article 54 EPC, having regard to a prior
publication which discloses the use of that compound for a different
non-medical purpose, so that the only novel feature in the claim is the
purpose for which the compound is used?"</blockquote>
The answer to this question is by no means self-evident. For example, in case <b>T 231/85</b> (referred to in <b>G 2/88</b>) the claims in question related to the "Use of (certain compounds) ... for
controlling fungi and for preventive fungus control" - and the
application contained teaching as to how to carry this out so as to
achieve this effect. A prior art document described the use of
the same compounds for influencing plant growth. In both the application
in suit and the prior art, the respective treatments were carried out in
the same way (so the means of realisation was the same). The sole difference between the claim and the prior art was the <i>purpose </i>for which the claimed use was carried out. The purpose - as was argued by a party <b>T 231/85</b> - is subjective and in principle merely a mental activity. It should not, according to the party, count as a technical feature of the claim. The Enlarged Board, however, decided differently. <br />
<br />
The Enlarged Board found that the different <i>purpose </i>of the claimed use establishes novelty over such prior art. In other words, a claim to the use of the compound for the particular purpose defined in the claim, which
use is based on a technical effect described in the patent, is to be interpreted as including that technical effect as a functional
technical feature. Hence prior art disclosing the same use of a compound, but for obtaining a different purpose, then such prior art is not novelty-destroying for the "second non-medical use" claim.<br />
<br />
<u>Remark</u>: <b>G 2/88</b> and <b>G 6/88</b> are consistent with the earlier <b>G 1/83</b>, <b>G 5/83</b> and <b>G 6/83</b>, which established similar principles for claims directed to second<i> medical </i>indications. The latter decisions held that the stated purpose of making a medicament recited in a "Swiss-type" claim establishes novelty over prior art disclosing the same medicament, but not disclosing the claimed medical indication (i.e., disease to be treated). See <a href="https://100mostcited.blogspot.com/2018/10/g-000583-second-medical-indication-21.html" target="_blank">here</a> for a brief summary of <b>G 5/83</b>.<br />
<br />
---<br />
<br />
<b>Headnote</b>:<br />
<blockquote class="tr_bq">
1. A change of category of granted claims in opposition proceedings is not open to objection under Article 123(3) EPC, if it does not result in extension of the protection conferred by the claims as a whole, when they are interpreted in accordance with Article 69 EPC and its Protocol. In this context, the national laws of the Contracting States relating to infringement should not be considered. </blockquote>
<blockquote class="tr_bq">
2. An amendment of granted claims directed to "a compound" and to "a composition including such compound", so that the amended claims are directed to "the use of that compound in a composition" for a particular purpose, is not open to objection under Article 123(3) EPC. </blockquote>
<blockquote class="tr_bq">
3. A claim to the use of a known compound for a particular purpose, which is based on a technical effect which is described in the patent, should be interpreted as including that technical effect as a functional technical feature, and is accordingly not open to objection under Article 54(1) EPC provided that such technical feature has not previously been made available to the public.</blockquote>
The full text of the decision can be found <a href="http://archive.epo.org/epo/pubs/oj1990/p093_185.pdf" target="_blank">here</a>.Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-3659537120253492694.post-42634828777980217702018-12-18T08:56:00.000+01:002018-12-18T08:56:00.538+01:00G 0001/03 - "Undisclosed" disclaimers - #4<div class="separator" style="clear: both; text-align: center;">
<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiFFTQelKDbQT-3AIUjwga-Pur9yg16v7MCMJXZcHkC_RixCqRTS7mAkPTh-WJauEBkgZ9pCAciPcLYcRsxzeH0C8Jnw4ENIdWls2QpWNd9Gd4OD_JAFHOna9JryYwprYhA5hY7KiPesE0/s1600/plot4.jpg" imageanchor="1" style="clear: right; float: right; margin-bottom: 1em; margin-left: 1em;"><img border="0" data-original-height="900" data-original-width="1200" height="240" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiFFTQelKDbQT-3AIUjwga-Pur9yg16v7MCMJXZcHkC_RixCqRTS7mAkPTh-WJauEBkgZ9pCAciPcLYcRsxzeH0C8Jnw4ENIdWls2QpWNd9Gd4OD_JAFHOna9JryYwprYhA5hY7KiPesE0/s320/plot4.jpg" width="320" /></a></div>
Citation rank: 4<br />
No. of citations: 308<br />
<br />
<b>G 1/03</b> (together with <b>G 2/03</b>) defined under which conditions "undisclosed disclaimers" (i.e., disclaimers disclaiming subject matter where neither the disclaimer nor the subject-matter excluded by it have a basis in the application as filed) can be introduced into a claim without extending subject matter under Art. 123(2).<br />
<br />
Prior to <b>G 1/03</b> established case law allowed - under certain
circumstances - disclaimers having no basis in the application as
filed. This case law had been called into question in
<b>T 323/97</b>, which held that the introduction
of a negative feature into a claim resulting in the exclusion of certain
embodiments was, regardless of the name "disclaimer", nonetheless an
amendment governed by Article 123(2) and (3) EPC.<br />
<br />
In particular the chemical industry had often relied on undisclosed disclaimers to establish novelty of their broad Markush-type claims over prior art that they had previously been unaware of; be it because the prior art was post-published under Art. 54(3), or be it because the prior art document was "accidental", e.g., from a far remote technical field.<br />
<br />
The Enlarged Board looked into the situation concerning <b>post-published Art. 54(3) documents</b>. Considering the legislative history of Art. 54(3) they noted that the fathers of the EPC opted for the more restrictive "whole contents approach" rather than for the less stringent "prior claim approach", under which "hole contents approach" the whole content of a post-published 54(4) document is taken into account, rather than only its claims (point 2.1.1 of the reasons). They considered that the legislator tried to limit the detrimental effect of post-published 54(3) documents by making them only relevant with respect to novelty, not relevant with respect to inventive step (Art. 56, second sentence).<br />
<br />
In line with this approach of limiting the negative effect of post-published prior art on subsequent patent applications (and patents), the Enlarged Board allowed the disclaiming of parts of the originally claimed scope, if the excluded subject matter was disclosed in a 54(3) document. This was justified as follows:<br />
<blockquote class="tr_bq">
"Such a disclaimer, only excluding subject-matter for legal reasons, is
required to give effect to Article 54(3) EPC and has no bearing on the
technical information in the application. It is, therefore, not in
contradiction to Article 123(2) EPC. Applied in this sense, the term
disclaimer is justified also in its literal meaning. An invention
comprising different specific embodiments or groups thereof has been
disclosed in the application as filed, a part of which is excluded from
the requested protection, ie no longer claimed. The remaining
subject-matter is not modified by the disclaimer." (point 2.1.3 of the reasons)</blockquote>
For related reasons, the Enlarged Board also found it appropriate to allow undisclosed disclaimers in the case of <b>"accidental anticipations"</b> (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, see Headnote II.1). Since the applicant could not have been aware of the accidentally anticipating document, it would be appropriate to allow him to disclaim the accidentally disclosed subject matter, so as to make his claim new over the accidentally anticipating document (point 2.2 of the reasons).<br />
<br />
Finally, the Enlarged Board found it appropriate to also allow undisclosed disclaimers in cases where a claim includes <b>subject matter which is excluded from patentability under Art. 52-57 for non-technical reasons</b>. The reasoning here was that a foreign applicant, who files a first application in his country (where certain subject matter, such as medical methods, is possibly not excluded from patentability) cannot be expected to know or to study the substantive patentability requirements of all countries in which he/she may later wish to claim the priority of his first application. The Enlarged Board stated:<br />
<blockquote class="tr_bq">
"... the applicant cannot be expected to check the substantive patent law of
all possible states before filing the application and to introduce
appropriate limitations in order to cope with any exclusions which he
might later face in the respective states. Extending the requirement of
sufficient disclosure to limitations merely disclaiming subject-matter
not eligible for patent protection would seriously impede the
long-established systems of obtaining patent protection in an
international framework." (point 2.4.3 of the reasons)</blockquote>
The Enlarged Board went on to defined the manner in which undisclosed disclaimers must be formulated. They stated that a disclaimer must not remove more than is necessary to
restore novelty or to disclaim subject-matter excluded from
patentability under Art. 52-57 for non-technical reasons (Headnote II.2). Furthermore, a undisclosed disclaimer must not become relevant for the assessment of inventive step or sufficiency
of disclosure, because then it would infringe Art. 123(2) EPC (Headnote II.3). Finally, the amended claim containing the disclaimer must meet the requirements of clarity and conciseness of Article 84 EPC (Headnote II.4).<br />
<br />
<u>Remark</u>: <b>G 1/03</b> established a stable set of rules regarding the admissibility of undisclosed disclaimers. This stable system was called into question later, when <a href="http://archive.epo.org/epo/pubs/oj012/06_12/06_3762.pdf" target="_blank"><b>G 2/10</b></a> (dealing with so-called "disclosed disclaimers") was published. Some Boards of Appeal have interpreted <b>G 2/10</b> in such a manner as to impose additional requirements on the admissibility of undisclosed disclaimers (<i>i.e.</i>, on top of the requirements expressed in <b>G 1/03</b>). In particular, some Boards found that the "remaining subject matter test" of <b>G 2/10</b> should also be applied to <u>un</u>disclosed disclaimers. However, <a href="https://www.epo.org/law-practice/legal-texts/official-journal/2018/08/a70/2018-a70.pdf" target="_blank"><b>G 1/16</b></a> recently re-established the old order by clarifying that the requirements expressed in <b>G 1/03</b> are the only ones to be applied to undisclosed disclaimers.<br />
<br />
---<br />
<br />
<b>Headnote</b>:<br />
<blockquote class="tr_bq">
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. </blockquote>
<blockquote class="tr_bq">
II. The following criteria are to be applied for assessing the
allowability of a disclaimer which is not disclosed in the application
as filed: </blockquote>
<blockquote class="tr_bq">
II.1 A disclaimer may be allowable in order to:<br />
- restore novelty by delimiting a claim against state of the art under Article 54(3) and (4) EPC;<br />
- 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<br />
- disclaim subject-matter which, under Articles 52 to 57 EPC, is excluded from patentability for non-technical reasons. </blockquote>
<blockquote class="tr_bq">
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. </blockquote>
<blockquote class="tr_bq">
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. </blockquote>
<blockquote class="tr_bq">
II.4 A claim containing a disclaimer must meet the requirements of clarity and conciseness of Article 84 EPC.</blockquote>
The full text of the decision can be found <a href="http://archive.epo.org/epo/pubs/oj004/08_04/08_4134.pdf" target="_blank">here</a>. Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-3659537120253492694.post-79943020878004429492018-12-17T07:30:00.000+01:002018-12-17T07:38:21.660+01:00T 0641/00 - Mix of technical an non-technical features / "Comvik" - #5<div class="separator" style="clear: both; text-align: center;">
<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjibYqUdhMcU-kiRSRXqkR5u4lwVhNd6BQ4XRGdm60gdtsSO5TU1Ar6WeCY6tsy4Lt_1jnlIoQE8Odx0BYo_ddf2ApiFSWqQhMdQ7i39-8GlScyNVQwBecCaCRMf9uyT2kQ3S3phNCIU4o/s1600/plot5.jpg" imageanchor="1" style="clear: right; float: right; margin-bottom: 1em; margin-left: 1em;"><img border="0" data-original-height="900" data-original-width="1200" height="240" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjibYqUdhMcU-kiRSRXqkR5u4lwVhNd6BQ4XRGdm60gdtsSO5TU1Ar6WeCY6tsy4Lt_1jnlIoQE8Odx0BYo_ddf2ApiFSWqQhMdQ7i39-8GlScyNVQwBecCaCRMf9uyT2kQ3S3phNCIU4o/s320/plot5.jpg" width="320" /></a></div>
Citation rank: 5<br />
No. of citations: 258<br />
<br />
The "Comvik" decision (<b>T 641/00</b>) is concerned with the question of how to deal with claims containing a mix of technical and non-technical features.<br />
<br />
The underlying invention in this opposition-appeal case related to the control of subscriber identities in a GSM mobile phone system, wherein at least two subscriber identities are selectively usable under one subscriber identity module (SIM), and wherein the selective activation of the subscriber identity is used for distributing the costs for service and private calls or among different users.<br />
<br />
The Technical Board had to decide whether the claimed invention was inventive.<br />
<br />
The Board firstly noted that it is generally legitimate to have a mix of technical and non-technical features within one claim, even if the technical was not the dominating part of the invention (point 4 of the reasons).<br />
<br />
The Board also recalled that the problem-solution-approach is based on the technical character of the invention, <i>e.g</i>., the problem solved by the invention must be a technical one (point 5 of the reasons). The Board cited earlier case law (<b>T 158/97, T 72/95, T 157/97, T
176/97, T
27/97</b>) and confirmed that the approach taken in these decisions to ignore non-technical features when assessing inventive step was entirely consistent with the general requirement under the EPC that an invention must have technical character. This led to the conclusion that an invention in the sense of Article 52
EPC can only be made up of those features which contribute to said
technical character (point 6 of the reasons).<br />
<br />
Although it was accepted that the formulation of the problem should normally not contain any pointer to its solution provided by the claim, the Board found that this principle only applies to the <i>technical </i>features of the claim. They stated:<br />
<blockquote class="tr_bq">
"Merely
because some feature appears in the claim does not automatically exclude
it from appearing in the formulation of the problem. In particular
where the claim refers to an aim to be achieved in a non-technical
field, this aim may legitimately appear in the formulation of the
problem as part of the framework of the technical problem that is to be
solved, in particular as a constraint that has to be met."</blockquote>
Such non-technical constraints which can be used in the formulation of the technical problem are referred to as a "requirement specification" in the current Guidelines (2018) G-VII, 5.4.2.1.<br />
<br />
In the specific case, the Board found that the distinguishing features requiring that "at least two identities are selectively usable", and "the selective activation being used for distributing the costs for service and private calls or among different users" were no <i>technical </i>features, as they merely defined a financial or administrative concept. These features were thus to be ignored when assessing inventive step.<br />
<br />
As a result, the claim was considered lacking inventive step and the proprietor's appeal was dismissed.<br />
<br />
<u>Remark</u>: The manner in which the EPO examines claims containing a mix of technical and non-technical features is described in Chapter G-VII, 5.4 of the current Guidelines (2018), including four illustrative examples.<br />
<br />
---<br />
<br />
<b>Headnote</b>:<br />
<blockquote class="tr_bq">
none</blockquote>
The full text of the decision can be found <a href="https://www.epo.org/law-practice/case-law-appeals/recent/t000641ep1.html" target="_blank">here</a>. Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-3659537120253492694.post-90892263151577248702018-12-13T09:18:00.000+01:002019-01-22T08:01:53.316+01:00G 0001/93 - Limiting feature / The "inescapable trap" - #6<div class="separator" style="clear: both; text-align: center;">
<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjcx5g06hvQNse-daLzmjXT0fiQViRJ0P9P-pLsXyeuHjZ1uSWDixQt77OfV7Z5GTJZuJWHQNB846m0FzlHONoaIELdO17auvhZadTeSceGJFB4WOPTZw3PjXT5QivwNjqxErfSWJN9XVc/s1600/plot6.jpg" imageanchor="1" style="clear: right; float: right; margin-bottom: 1em; margin-left: 1em;"><img border="0" data-original-height="900" data-original-width="1200" height="240" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjcx5g06hvQNse-daLzmjXT0fiQViRJ0P9P-pLsXyeuHjZ1uSWDixQt77OfV7Z5GTJZuJWHQNB846m0FzlHONoaIELdO17auvhZadTeSceGJFB4WOPTZw3PjXT5QivwNjqxErfSWJN9XVc/s320/plot6.jpg" width="320" /></a></div>
Citation rank: 6<br />
No. of citations: 258<br />
<br />
<b>G 1/93</b> deals with the conflicting requirements of Art. 123(2) and (3), and with the harsh consequences that an undetected violation of Art. 123(2) during examination can have on the patentee.<br />
<br />
Art. 123(2) holds that a patent application or patent may not be amended in such a way that it includes subject matter which goes beyond the content of the application as filed. Art. 123(3), on the other hand, holds that a <i>patent</i> may not be amended such that its scope of protection is extended.<br />
<br />
In the underlying case, the applicant filed, upon prosecution, amended claims which included a limiting feature going beyond the content of the original application. The Examining Division failed to spot this. Hence a patent was granted despite a violation of Art. 123(2). The patent was opposed and the opponent raised, <i>i.a.</i>, the ground of Art. 100(c) (extension of subject matter). The Opposition Division accepted that submission and revoked the patent. The proprietor appealed against that decision.<br />
<br />
Upon appeal, the Technical Board considered the principal
relationship between paragraphs 2 and 3 of Article 123 EPC. They noted that in such cases where an unallowed amendment is made in examination by introduction of an undisclosed limiting feature, but a patent was nevertheless granted on the amended claim, such limiting feature could in principle not be removed in opposition without violating Art. 123(3). The Technical Board found this situation somewhat unsatisfactory, because was a rather harsh consequence of an error, which was - after all - also not spotted by the Examining Division. The Board thus referred the following question to the Enlarged Board of Appeals:<br />
<blockquote class="tr_bq">
"If a European patent as granted contains subject-matter which extends
beyond the content of the application as filed and also limits the scope
of protection conferred by the claims, is it possible during the
opposition proceedings to maintain the patent in view of paragraphs 2
and 3 of Article 123 EPC?"</blockquote>
The Enlarged Board looked a previous case law regarding this matter. They noted that insofar as in these cases the Boards of Appeal have found support in the
original applications for replacing added undisclosed technical
features by other features without violating Article 123(3) EPC, they
seem to be uncontroversial. They also found that it was never disputed that an
added undisclosed feature without any technical meaning may be deleted
from a claim without violating Article 123(3) EPC. The situation addressed the referred question (where the added feature had technical meaning, i.e., a limiting character), however, was still not fully clarified by case law.<br />
<br />
The Enlarged Board found that both Art. 123(2) and 123(3) have mandatory character and that paragraphs 2 and 3 of Article 123 EPC are
mutually independent of each other. They stated:<br />
<blockquote class="tr_bq">
"Thus, if a limiting feature is
considered to fall under Article 123(2) EPC, it cannot be maintained in
the patent in view of Article 100(c) EPC, nor can it be removed from the
claims without violating Article 123(3) EPC. Only if the added feature
can be replaced by another feature disclosed in the application as filed
without violating Article 123(3) EPC, can the patent be maintained (in
amended form). [...] In this
sense, it must be admitted that Article 123(2) in combination with
Article 123(3) EPC can operate rather harshly against an applicant, who
runs the risk of being caught in an inescapable trap and losing
everything by amending his application, even if the amendment is
limiting the scope of protection." (point 14 of the reasons)</blockquote>
In some cases, however, where the undisclosed feature (while having a limiting effect on the scope of the claim) makes no technical contribution to the invention, the Enlarged Board found that the limiting feature may remain in the claim without infringing Art. 123(3). They stated:<br />
<blockquote class="tr_bq">
"If
such added feature, although limiting the scope of protection conferred
by the patent, has to be considered as providing a technical
contribution to the subject-matter of the claimed invention, it would,
in the view of the Enlarged Board, give an unwarranted advantage to the
patentee contrary to the above purpose of Article 123(2) EPC.
Consequently, such feature would constitute added subject-matter within
the meaning of that provision. A typical example of this seems to be the
case, where the limiting feature is creating an inventive selection not
disclosed in the application as filed or otherwise derivable therefrom.
If, on the other hand, the feature in question merely excludes
protection for part of the subject- matter of the claimed invention as
covered by the application as filed, the adding of such feature cannot
reasonably be considered to give any unwarranted advantage to the
applicant. Nor does it adversely affect the interests of third parties
(cf. paragraph 12 above). In the view of the Enlarged Board, such
feature is, on a proper interpretation of Article 123(2) EPC, therefore
not to be considered as subject-matter extending beyond the content of
the application as filed within the meaning of that provision. It
follows that a patent containing such a feature in the claims can be
maintained without violating Article 123(2) EPC or giving rise to a
ground for opposition under Article 100(c) EPC. The feature being
maintained in the claims, there can be no violation of Article 123(3)
EPC either." (point 16 of the reasons)</blockquote>
In other words, the Enlarged Board confirmed that an "inescapable trap" generally exists between Art. 123(2) and (3), but that in cases where the violating feature makes no technical contribution to the invention, an inescapable trap situation is not present. <br />
<br />
<u>Remark</u>: <b>G 1/93</b> in principle distinguishes between technical features, which make a technical contribution and those which do not. This concept has later been used by the Enlarged Board in <b>G 1/03</b>, <b>G 2/03</b> when considering admissibility of undisclosed disclaimers (see <a href="https://100mostcited.blogspot.com/2018/08/g-000203-disclaimerppg-undisclosed.html" target="_blank">here</a> for a brief summary of <b>G 2/03</b>).<br />
<br />
---<br />
<br />
<b>Headnote</b>:<br />
<blockquote class="tr_bq">
1. If a European patent as granted contains subject-matter which extends beyond the content of the application as filed within the meaning of Article 123(2) EPC and which also limits the scope of protection conferred by the patent, such patent cannot be maintained in opposition proceedings unamended, because the ground for opposition under Article 100(c) EPC prejudices the maintenance of the patent. Nor can it be amended by deleting such limiting subject-matter from the claims, because such amendment would extend the protection conferred, which is prohibited by Article 123(3) EPC. Such a patent can, therefore, only be maintained if there is a basis in the application as filed for replacing such subject-matter without violating Article 123(3) EPC.</blockquote>
<br />
<blockquote class="tr_bq">
2. A feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed within the meaning of Article 123(2) EPC. The ground for opposition under Article 100(c) EPC therefore does not prejudice the maintenance of a European patent which includes such a feature.</blockquote>
The full text of <b>G 1/93</b> can be found <a href="http://documents.epo.org/projects/babylon/eponet.nsf/0/DE377A6E5234B4AAC12572C8006CE207/$File/g930001.pdf" target="_blank">here</a>. Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-3659537120253492694.post-8014309565777271082018-12-04T08:26:00.002+01:002019-01-22T08:02:12.166+01:00G 0009/92 - "Non-appealing party" - #7<div class="separator" style="clear: both; text-align: center;">
<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjN6AZKy0mevC6MHzFwO7cCASABLa9wasZgH4G6Yxeu40hKSANEqDOwud9mISSltoj8PSbIhEj3lCsSBarif7qA4znh6q3pfBfLAm_VUSwgBfps04S9VKGMz4mj-jzXtoN8XWINB7Knnl0/s1600/plot7.jpg" imageanchor="1" style="clear: right; float: right; margin-bottom: 1em; margin-left: 1em;"><img border="0" data-original-height="900" data-original-width="1200" height="240" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjN6AZKy0mevC6MHzFwO7cCASABLa9wasZgH4G6Yxeu40hKSANEqDOwud9mISSltoj8PSbIhEj3lCsSBarif7qA4znh6q3pfBfLAm_VUSwgBfps04S9VKGMz4mj-jzXtoN8XWINB7Knnl0/s320/plot7.jpg" width="320" /></a></div>
Citation rank: 7<br />
No. of citations: 254<br />
<br />
<b>G 9/92 </b>(in consolidated proceedings with <b>G 4/93</b>, see same review <a href="https://100mostcited.blogspot.com/2018/10/g-000493-non-appealing-party-23.html" target="_blank">here</a>) looked at the consequences of the "principle of party disposition" on <i>inter partes </i>opposition-appeal proceedings.<br />
<br />
Two
Boards of Appeal referred questions to the Enlarged Board of Appeal
under Art. 112(1)(a) EPC. The questions arose from three appeal cases,
all of which were concerned with an appeal against the decision of an
oppositon division to maintain the patent in amended form according to Art.
101(3)(a) EPC. In one case the proprietor was the sole appellant, in
another case only the opponent appealed. In the third case both parties
appealed.<br />
<br />
The Technical Boards referred the question whether a Board
of Appeal, in proceedings before it, could put the sole appellant in a
worse position than
if it had not appealed, or whether there should be
prohibition of <i>reformatio in peius</i> (Latin: "change for the worse"). Specifically, they asked the Enlarged Board:<br />
<blockquote class="tr_bq">
"Can the Board of Appeal amend a contested decision to the Appellant's disadvantage? - If so, to what extent?"</blockquote>
The Enlarged Board pointed out that the proceedings before the EPO are generally goverened by the principle of party disposition, <i>i.e.</i>,
that the parties define the extent of the proceedings through their
intial requests. This principle is also known as the principle of "<i>ne
ultra petita</i>" (Latin: "not beyond the request").<br />
<br />
The Enlarged Board mentioned that decisions <b>G 9/91</b> and <b>G 10/91</b>
already clarified that the principle of party disposition applies to
opposition and opposition-appeal proceedings before the EPO (see <b>G 9/92</b>, points 3 and 4 of the reasons). The principle of <i>ex officio </i>examination
(Art. 114(1) EPC), on the other hand, found little application in
appeal proceedings (points 4 and 5 of the reasons).<br />
<br />
Under
the principle of party disposition, in opposition-appeal cases in which the patent is maintained in amended form, the appeal <i>of the proprietor</i>,
who is the sole appellant, can only be understood as a request of the
proprietor-appellant to maintain its patent in unamended form, or at
least with a scope somewhere between that of the patent upheld in
opposition and the scope as granted. In any case, the proprietor's
appeal cannot be interpreted as being a request to further limit the
appellant's patent. Therefore, the Enlarged Board in <b>G 9/92</b> found that it would be
against the principle of party disposition to limit a patent to less
than the scope maintained in opposition, <i>if the proprietor is the sole appellant</i> (see <b>Headnote I</b>).<br />
<br />
Where
<i>the opponent</i> is the sole appellant, the situation is the opposite. It
would be against the principle of party disposition, if an Appeal Board <i>broadened</i> the scope of the patent (<i>e.g.</i>,
maintained the patent as granted). This would certainly be against the
opponent/sole appellant's initial request. The proprietor is thus
primarily restricted to defending the
patent in the form in which it was maintained by the Opposition Division
(see <b>Headnote II</b>).<br />
<br />
If both, the proprietor and the
opponent, appeal against the decision to uphold the patent in amended
form, the principle of party disposition clearly can no longer be
fully observed. This is impossible, because of the parties' initial requests
are contradicting. In this situation, an Appeal Board is free to broaden
or lessen the scope of the patent as mainteined by the opposition
division all the way from maintenance as granted to revocation in full.<br />
<br />
<u>Remark</u>: <b>G 1/99</b>
("Reformatio in peius") later took a closer look at the situation in
which the opponent is the sole appellant (Headnote II, below). <b>G 1/99</b>
exceptionally allowed broadening of the scope of the claims (beyond the
scope of the claims maintained in opposition, but within the limits of
Art. 123(3)) in the case where the proprietor would otherwise lose its
patent because of a Art. 123(2) infringement which occurred during the
opposition stage. The cautious wording "may be rejected as inadmissible
by the Board of
Appeal if they are neither appropriate nor necessary" in Headnote II,
below, was thus interpreted as as allowing certain exceptions. See <a href="https://100mostcited.blogspot.com/2018/10/g-000199-reformatio-in-peius-22.html" target="_blank">here</a> for a brief summary of <b>G 1/99</b>.<br />
<br />
---<br />
<br />
<b>Headnote</b>:<br />
<blockquote class="tr_bq">
I. If the patent proprietor is the sole appellant against an
interlocutory decision maintaining a patent in amended form, neither the
Board of Appeal nor the non-appealing opponent as a party to the
proceedings as of right under Article 107, second sentence, EPC, may
challenge the maintenance of the patent as amended in accordance with
the interlocutory decision.</blockquote>
<blockquote class="tr_bq">
II. If the opponent is the sole appellant against an interlocutory
decision maintaining a patent in amended form, the patent proprietor is
primarily restricted during the appeal proceedings to defending the
patent in the form in which it was maintained by the Opposition Division
in its interlocutory decision. Amendments proposed by the patent
proprietor as a party to the proceedings as of right under Article 107,
second sentence, EPC, may be rejected as inadmissible by the Board of
Appeal if they are neither appropriate nor necessary.</blockquote>
The full text of the decision can be found <a href="http://documents.epo.org/projects/babylon/eponet.nsf/0/E96C67DA16257F70C12572C8007187ED/$File/g920009.pdf" target="_blank">here</a>.<br />
<br />Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-3659537120253492694.post-55184302757389197082018-12-03T08:29:00.001+01:002018-12-04T08:04:39.471+01:00G 0002/98 - "The same invention" - #8<div class="separator" style="clear: both; text-align: center;">
<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiVb1oBGSH4IrFhuGc9HcjRdtNS6CnE6r4XxSVdJxXKJmsIHzojHZoTZIW8FvYB-Bgv51S1CFvBbVwvEObhEtW5q1YRhv7xIsefBuYuHWJ74evt0YehBM4e-SYsYnqts3o_xblRdraAIng/s1600/plot8.jpg" imageanchor="1" style="clear: right; float: right; margin-bottom: 1em; margin-left: 1em;"><img border="0" data-original-height="900" data-original-width="1200" height="240" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiVb1oBGSH4IrFhuGc9HcjRdtNS6CnE6r4XxSVdJxXKJmsIHzojHZoTZIW8FvYB-Bgv51S1CFvBbVwvEObhEtW5q1YRhv7xIsefBuYuHWJ74evt0YehBM4e-SYsYnqts3o_xblRdraAIng/s320/plot8.jpg" width="320" /></a></div>
Citation rank: 8<br />
No. of citations: 240<br />
<br />
Decision <b>G 2/98</b> answered the question which requirements have to be met in order for a priority claim (Art. 87 EPC) to be valid.<br />
<br />
The relevance of <b>G 2/98</b>, however, goes beyond the question of priority. The key requirement for validly claiming priority, <i>i.e.</i>, "direct and unambiguous disclosure" has then been applied to other important aspects of the EPC procedure, namely in the assessment of novelty (Art. 54), and admissibility of amendments (Art. 123(2)). <br />
<br />
The main question that was referred to the Enlarged Board in <b>G 2/98</b> was whether the requirement of the "same invention" in Article 87(1) EPC means
that "the extent of the right to priority derivable from a priority
application for a later application is determined by, and at the same
time limited to, what is at least implicitly disclosed in the priority
application". The case law of the Boards of Appeal had not been entirely consistent on this question.<br />
<br />
The Enlarged Board looked, <i>i.a.</i>, at Articles 4F and 4H of the Paris Convention, which is an independent, separate set of priority rules, which rules, however, should be interpreted in the same manner as the priority rules of the EPC (because the latter constitutes, according to its preamble, a special agreement within the meaning of Article 19 of the Paris Convention).<br />
<br />
The Enlarged Board finally concluded: <br />
<blockquote class="tr_bq">
"[A]ccording to that analysis, a narrow or strict interpretation of
the concept of "the same invention", equating it to the concept of "the
same subject-matter" referred to in Article 87(4) EPC (cf. point 2
supra), is necessary to ensure a proper exercise of priority rights in
full conformity inter alia with the principles of equal treatment of the
applicant and third parties (cf. point 8.1 supra) and legal certainty
(cf. point 8.3 supra) and with the requirement of consistency with
regard to the assessment of novelty and inventive step (cf. point 8.1
supra). [...] It means that priority of a previous application in respect of a claim
in a European patent application in accordance with Article 88 EPC is to
be acknowledged <b>only if the person skilled in the art can derive the
subject-matter of the claim directly and unambiguously, using common
general knowledge, from the previous application as a whole</b>." (point 9 of the reasons, emphasis added)</blockquote>
As mentioned above, the same strict standard is nowadays applied in the assessment of novelty over a prior art document, and in the assessment of admissibility of amendments.<br />
<br />
---<br />
<br />
<b>Headnote</b>:<br />
<blockquote class="tr_bq">
The requirement for claiming priority of "the same invention", referred to in Article 87(1) EPC, means that priority of a previous application in respect of a claim in a European patent application in accordance with Article 88 EPC is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole.</blockquote>
The full text of the decision can be found <a href="http://documents.epo.org/projects/babylon/eponet.nsf/0/D616F77B3B0BA362C12572C8006F2E6E/$File/10_4131.pdf" target="_blank">here</a>. Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-3659537120253492694.post-58992330840598508142018-11-29T08:37:00.001+01:002018-12-01T08:25:52.390+01:00G 0010/93 - Scope of examination in ex parte appeal - #9<div class="separator" style="clear: both; text-align: center;">
<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiedxlRnFJPGcIw-dkQg8yYE9eXj0VFytctALuxOBhyzzzEox-OeSXFtf0Zdg7cjg2afid12XmemtY0RjWv_xZm4rYqcCil3JejF64Bz1sF9W4ZZJE3zwnUwzO4vAHSihZ4893_lecTV_0/s1600/plot9.jpg" imageanchor="1" style="clear: right; float: right; margin-bottom: 1em; margin-left: 1em;"><img border="0" data-original-height="900" data-original-width="1200" height="240" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiedxlRnFJPGcIw-dkQg8yYE9eXj0VFytctALuxOBhyzzzEox-OeSXFtf0Zdg7cjg2afid12XmemtY0RjWv_xZm4rYqcCil3JejF64Bz1sF9W4ZZJE3zwnUwzO4vAHSihZ4893_lecTV_0/s320/plot9.jpg" width="320" /></a></div>
Citation rank: 9<br />
No. of citations: 234<br />
<br />
<b>G 10/93</b> is concerned with the question of whether, and to what extent, an Appeal Board in <i>ex parte </i>proceedings (<i>i.e.</i>, in examination-appeal cases) can or must examine those requirements, which the Examining Division considered to have been met.<br />
<br />
Previously (in <b>G 10/91</b>) the Enlarged Board had taken a strict view on the power of Appeal Boards to consider fresh grounds of opposition in <i>inter partes</i> appeal proceedings. The Enlarged Board held that fresh grounds can only be examined in <i>inter partes</i> 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.<br />
<br />
The Enlarged Board in <b>G 10/93</b> found that the situation <i>ex parte </i>appeal proceedings is different. They stated:<br />
<blockquote class="tr_bq">
"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)</blockquote>
<br />
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:<br />
<blockquote class="tr_bq">
"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)</blockquote>
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 <i>reformatio in pejus</i>, 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). <i>Reformatio in pejus</i> is thus impossible.<br />
<br />
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.<br />
<br />
---<br />
<br />
<b>Headnote</b>:<br />
<blockquote class="tr_bq">
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.</blockquote>
The full text of G 10/93 can be accessed <a href="http://documents.epo.org/projects/babylon/eponet.nsf/0/4817F83F28153578C12572C8006C1E35/$File/g930010.pdf">here</a>. Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-3659537120253492694.post-34825559533639092702018-11-27T08:51:00.004+01:002018-11-27T08:54:23.197+01:00T 1002/92 - Admissibility of late-filed evidence (in opposition and appeal) - #10<div class="separator" style="clear: both; text-align: center;">
<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhcBdg1pru0mwRvVg1Q6shOn6YSFjlbetFL4-ZCl6hfNN1FINMnufl0pkrv6fnd9XfRhEmOAH_vFCoMvhuhMlNk8diRS0MK2nw_gbvoK34IiJpUKkBbWGmyrRexFqBUGWg_hPPrZY932SU/s1600/plot10.jpg" imageanchor="1" style="clear: right; float: right; margin-bottom: 1em; margin-left: 1em;"><img border="0" data-original-height="900" data-original-width="1200" height="240" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhcBdg1pru0mwRvVg1Q6shOn6YSFjlbetFL4-ZCl6hfNN1FINMnufl0pkrv6fnd9XfRhEmOAH_vFCoMvhuhMlNk8diRS0MK2nw_gbvoK34IiJpUKkBbWGmyrRexFqBUGWg_hPPrZY932SU/s320/plot10.jpg" width="320" /></a></div>
Citation rank: 10<br />
No. of citations: 218<br />
<br />
<b>T 1002/92</b> deals with the issue of late-filing of evidence, in particular late-filed documents. <br />
<br />
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).<br />
<br />
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.<br />
<br />
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.<br />
<br />
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<br />
<blockquote class="tr_bq">
(i) the
extent to which the European patent is opposed; and <br />
(ii) the grounds on
which the opposition is based; <b>but also:</b> <br />
(iii) an indication of the facts,
evidence and arguments in support of these grounds.</blockquote>
The Board quoted the Enlarged Board of Appeal in <b>G 9/91</b> and <b>G 10/91</b> where it is said that:<br />
<blockquote class="tr_bq">
"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" (<b>G 9/91</b>, point 6 of the reasons)</blockquote>
While <b>G 9/91</b> and <b>G 10/91</b> were mainly concerned with the admissibility of late-filed grounds for opposition (and held that late-filed grounds should only be admitted is <i>prima facie </i>relevant), the case under appeal in <b>T 1002/92</b> was concerned with late-filed <i>evidence</i>. In this context, the Board stated:<br />
<blockquote class="tr_bq">
"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." <b>(T 1002/93</b>, point 3.2 of the reasons). </blockquote>
The Board finally concluded: <br />
<blockquote class="tr_bq">
"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." (<b>T 1002/92</b>, point 3.3 of the reasons) </blockquote>
Regarding the proceedings before the Appeal Boards, <b>T 1002/92</b> took an even stricter standpoint. They stated that - following the same principles, above -, the <br />
<blockquote class="tr_bq">
"'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 <u>only very exceptionally</u> be admitted into
the [Appeal] proceedings, if such new material is prima facie <u>highly</u> relevant in
the sense that it is <u>highly</u> likely to prejudice maintenance of the
European patent in suit." (point 3.4 of the reasons; underling added)</blockquote>
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.<br />
<br />
The evidence was hence not admitted.<br />
<br />
---<br />
<br />
<b>Headnote</b>:<br />
<blockquote class="tr_bq">
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.<br />
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.</blockquote>
The full text of the decision can be found <a href="https://www.epo.org/law-practice/case-law-appeals/recent/t921002ep1.html">here</a>.<br />
<br />Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-3659537120253492694.post-76042563080376461512018-11-23T08:25:00.003+01:002018-12-17T07:37:04.591+01:00T 0002/83 - Problem-inventions / The "could-would" approach - #11<div class="separator" style="clear: both; text-align: center;">
<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgRdhYjp53LnAZjPT56Oct1Yb9-QNyk8ufoJfSZP07c9PnWPapjfRRmjYn9mUWKpTDAu6DkHOhXPhoFID6-X2FCXj2dgiXctlhfX8Z69CyhMUaERKJsvBrRMEtD7qoyM9iWgJOTtI7Rc4U/s1600/plot11.jpg" imageanchor="1" style="clear: right; float: right; margin-bottom: 1em; margin-left: 1em;"><img border="0" data-original-height="900" data-original-width="1200" height="240" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgRdhYjp53LnAZjPT56Oct1Yb9-QNyk8ufoJfSZP07c9PnWPapjfRRmjYn9mUWKpTDAu6DkHOhXPhoFID6-X2FCXj2dgiXctlhfX8Z69CyhMUaERKJsvBrRMEtD7qoyM9iWgJOTtI7Rc4U/s320/plot11.jpg" width="320" /></a></div>
Citation rank: 11<br />
No. of citations: 216<br />
<br />
<b>T 2/83</b> is known for two things: firstly, it confirmed that "problem inventions" exist, <i>i.e.</i>, 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, <b>T 2/83</b> 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.<br />
<br />
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.<br />
<br />
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>i.e.</i>, providing "barrier means" to prevent migration of components from one volume portion to another) was trivial.<br />
<br />
The Board generally agreed. They confirmed that<br />
<blockquote class="tr_bq">
"[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)</blockquote>
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:<br />
<blockquote class="tr_bq">
"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 <u>could</u> have
inserted a barrier between the layers but whether he <u>would</u> have done so
in expectation of some improvement or advantage." (point 7 of the reasons; emphasis added)</blockquote>
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 <i>could </i>have introduced a barrier layer, but he did not have an incitement to do so. Hence, while the skilled person <i>could </i>have introduced the barrier layer, he <i>would </i>not necessarily have done so.<br />
<br />
The Board concluded that claim 1 was based on inventive step.<br />
<br />
The "could-would" approach is nowadays routinely applied in the assessment of inventive step by all instances of the EPO (see, <i>e.g</i>., <a href="https://www.epo.org/law-practice/legal-texts/html/guidelines/e/g_vii_5_3.htm">Guidelines 2018, VII, 5.3</a>).<br />
<br />
---<br />
<br />
<b>Headnote</b>:<br />
<blockquote class="tr_bq">
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").<br />
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.</blockquote>
The full text of the decision can be found <a href="https://www.epo.org/law-practice/case-law-appeals/recent/t830002ep1.html#q%22T%200002%2F83%22">here</a>.Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-3659537120253492694.post-72621407485383453152018-11-20T08:39:00.002+01:002018-11-21T08:23:30.167+01:00T 0153/85 - Admissibility of late-filed requests / Criterion of "clear allowability" - #12<div class="separator" style="clear: both; text-align: center;">
<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhJoCk0ip9QOGkbJ-P2c-ESSE-yLw_CUbnfYvj_F_l1-u6etkylhTLYRwuO2ApY_VZC_kDIfpkpL_9RXCb8TxIUBnRfjuuQ-3YmNB7ZJo7STwZ6HQrWGJwtSjsg11TwYe6g3182KiNxEQk/s1600/plot12.jpg" imageanchor="1" style="clear: right; float: right; margin-bottom: 1em; margin-left: 1em;"><img border="0" data-original-height="900" data-original-width="1200" height="240" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhJoCk0ip9QOGkbJ-P2c-ESSE-yLw_CUbnfYvj_F_l1-u6etkylhTLYRwuO2ApY_VZC_kDIfpkpL_9RXCb8TxIUBnRfjuuQ-3YmNB7ZJo7STwZ6HQrWGJwtSjsg11TwYe6g3182KiNxEQk/s320/plot12.jpg" width="320" /></a></div>
Citation rank: 12<br />
No. of citations: 212<br />
<br />
<b>T 153/85</b> is concerned with the criteria to be applied by Boards of Appeal when they assess admissibility of late-filed requests in appeal proceedings. <b>T 153/85</b> developed the criterion of "clear allowability" for the admissibility of such late-filed requests.<br />
<br />
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.<br />
<br />
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.<br />
<br />
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.<br />
<br />
The Board had to decide whether the very late filed new Main Request was admissible. They stated:<br />
<blockquote class="tr_bq">
"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)</blockquote>
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 (<i>ibid</i>.). <br />
<br />
From these considerations they concluded that<br />
<blockquote class="tr_bq">
"... 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."</blockquote>
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.<br />
<br />
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,<a href="https://www.epo.org/law-practice/legal-texts/html/guidelines/e/h_ii_2_7_1.htm" target="_blank"> H-II, 2.7.1</a> for examination, and <a href="https://www.epo.org/law-practice/legal-texts/html/guidelines2018/e/e_vi_2_1.htm" target="_blank">E-VI, 2.1</a>, <a href="https://www.epo.org/law-practice/legal-texts/html/guidelines2018/e/e_vi_2_2.htm">2.2</a> for opposition procedure). <br />
<br />
---<br />
<br />
<b>Headnote</b>:<br />
<blockquote class="tr_bq">
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.<br />
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.<br />
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.<br />
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.</blockquote>
The full text of the decision can be found <a href="https://www.epo.org/law-practice/case-law-appeals/recent/t850153ep1.html" target="_blank">here</a>. <br />
<br />
Quotes from decisions citing <b>T 153/85</b> can be found <a href="https://100mostcited.blogspot.com/p/decisions-citing-t-15385.html" target="_blank">here</a>.Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-3659537120253492694.post-2699679197914538422018-11-19T08:53:00.002+01:002019-01-22T08:05:00.305+01:00T 0409/91 - Sufficiency of disclosure vs. support by the desciption - #13<div class="separator" style="clear: both; text-align: center;">
<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjAglCf5WqrDuHGVY4WZ6HKCkpWqIMpWD9zYFhIVxrw7aGVOnJBFFJSzoQlROTCX-dFoxW4p6FjruooYmeoCFn8yNzRJuX_6UeNFJUcd9Wg70TpsT_PBu1_qEUsjZuQnqFNRAyKhRo0NMU/s1600/plot13.jpg" imageanchor="1" style="clear: right; float: right; margin-bottom: 1em; margin-left: 1em;"><img border="0" data-original-height="900" data-original-width="1200" height="240" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjAglCf5WqrDuHGVY4WZ6HKCkpWqIMpWD9zYFhIVxrw7aGVOnJBFFJSzoQlROTCX-dFoxW4p6FjruooYmeoCFn8yNzRJuX_6UeNFJUcd9Wg70TpsT_PBu1_qEUsjZuQnqFNRAyKhRo0NMU/s320/plot13.jpg" width="320" /></a></div>
Citation rank: 13<br />
No. of citations: 205<br />
<br />
<b>T 409/91</b> 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).<br />
<br />
Claim 1 of the application in dispute read:<br />
<blockquote class="tr_bq">
"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."</blockquote>
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. <br />
<br />
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.<br />
<br />
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>i.e</i>., 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> (i.e. </i>
the fuel oil) in terms of technical features.<br />
<br />
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 <b>T 133/85</b> 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.<br />
<br />
The Board also found that the claims lacked sufficiency of disclosure (Art. 83) for very similar reasons. The Board stated:<br />
<blockquote class="tr_bq">
"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)</blockquote>
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". <br />
<br />
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:<br />
<blockquote class="tr_bq">
"... 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 ...".</blockquote>
As a consequence, the appeal was dismissed.<br />
<br />
<u>Remark</u>: 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>i.e.</i>, the required "additives") <i>were disclosed in the description</i>. The argument frequently made by applicants and proprietors, that it is sufficient for complying with Art. 83 that <i>the description </i>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. <br />
<br />
---<br />
<br />
<b>Headnote</b>:<br />
<blockquote class="tr_bq">
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).</blockquote>
The full text of the decision can be found <a href="https://www.epo.org/law-practice/case-law-appeals/recent/t910409ep1.html" target="_blank">here</a>.<br />
<br />
<br />
Quotes from decisions citing <b>T 409/91</b> can be found <a href="https://100mostcited.blogspot.com/p/decisions-citing_19.html" target="_blank">here</a>.Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-3659537120253492694.post-41230200428016574042018-11-14T08:41:00.001+01:002019-01-22T08:03:28.900+01:00T 0939/92 - Technical effect "over the whole area claimed" - Triazoles/AGREVO - #14<div class="separator" style="clear: both; text-align: center;">
<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjgfSiEbubnEm61fuF024p-eXyE8KfgV6JyA3Hc05o0orFhCHj5YYsZzvkiZT7hIjxzlp5G8zLqOkWbkOcbgKP23z1VRbu7xgv_1Xud9C9NZ6mFyYMEQ37qGTqoWFfFKb58YHGsIrycCfg/s1600/plot14.jpg" imageanchor="1" style="clear: right; float: right; margin-bottom: 1em; margin-left: 1em;"><img border="0" data-original-height="900" data-original-width="1200" height="240" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEjgfSiEbubnEm61fuF024p-eXyE8KfgV6JyA3Hc05o0orFhCHj5YYsZzvkiZT7hIjxzlp5G8zLqOkWbkOcbgKP23z1VRbu7xgv_1Xud9C9NZ6mFyYMEQ37qGTqoWFfFKb58YHGsIrycCfg/s320/plot14.jpg" width="320" /></a></div>
Citation rank: 14<br />
No. of citations: 198<br />
<br />
<b>T 939/92</b> ("AGREVO") looked at the relationship between the contribution to the art and scope of claims and its bearing on the assessment of inventive step. <br />
<br />
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. <br />
<br />
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).<br />
<br />
While the Examining Division concluded that the claim lacked support (Art. 84), the Board stated that it does <i>not </i>follow from Article 84 EPC that a claim is objectionable simply because it is "unreasonably broad" (<i>cf</i>. Headnote I). The Board found that the claim was supported by the description, but saw problems regarding inventive step. In this context, they stated:<br />
<blockquote class="tr_bq">
"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."</blockquote>
In the case of the triazole compounds of claim 1, the applicant could only demonstrate herbicidal activity of <i>some </i>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).<br />
<br />
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.)<br />
<br />
---<br />
<br />
<b>Headnote</b>:<br />
<blockquote class="tr_bq">
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).<br />
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).</blockquote>
The full text of the decision can be accessed <a href="https://www.epo.org/law-practice/case-law-appeals/recent/t920939ep1.html#q%22T%200939%2F92%22" target="_blank">here</a>. Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-3659537120253492694.post-59216162126348285152018-11-13T08:49:00.000+01:002019-06-16T11:11:41.395+02:00T 0301/87 - Clarity in opposition proceedings (pre-G 3/14) - #15<div class="separator" style="clear: both; text-align: center;">
<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhJQoy_-qxLwdsxTB3tXoBKmk2ud_AcDu8QJn31Vm_Dsvi6U85dKUWtEhEJeDjG5tIM4Hh_M8t2kg_sFDGPiUsj51FIk-xVhyppU73jTyIEsTpBHDpSVjFzlZoxPFAcWR2SgcbJthMLdBM/s1600/plot15.jpg" imageanchor="1" style="clear: right; float: right; margin-bottom: 1em; margin-left: 1em;"><img border="0" data-original-height="900" data-original-width="1200" height="240" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhJQoy_-qxLwdsxTB3tXoBKmk2ud_AcDu8QJn31Vm_Dsvi6U85dKUWtEhEJeDjG5tIM4Hh_M8t2kg_sFDGPiUsj51FIk-xVhyppU73jTyIEsTpBHDpSVjFzlZoxPFAcWR2SgcbJthMLdBM/s320/plot15.jpg" width="320" /></a></div>
Citation rank: 15<br />
No. of citations: 191<br />
<br />
<b>T 301/87</b> 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 <b>G 3/14</b>.<b> G 3/14 </b>ultimately followed the approach taken by <b>T 301/87</b>, <i>i.e.</i>, that clarity objections are to be examined only if the clarity objections arise out of the amendments made during opposition. (<b>G 3/14</b> added an additional restriction to the examination of clarity objections in opposition, namely that the clarity objection can only be examined <i>to the extent that </i>the clarity objection arises from the amendment.)<br />
<br />
<b></b>
Consideration was given in <b>T 301/87</b> (and <b>G 3/14</b>) 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). <br />
<b></b><br />
<b>T 301/87</b> appears still valid after publication of <b>G 3/14</b>, but <b>G 3/14</b> of course carries more weight and is nowadays the decision to be cited.<b> G 3/14</b> (rank #16 in the list of most-cited Board of Appeal decisions) has recently been summarised in this blog <a href="https://100mostcited.blogspot.com/2018/11/g-000314-clarity-in-oppostion.html" target="_blank">here</a>.<br />
<br />
---<br />
<br />
<b>Headnote</b>:<br />
<blockquote class="tr_bq">
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)</blockquote>
<blockquote class="tr_bq">
[...]</blockquote>
<br />
The full text of the decision can be found <a href="https://www.epo.org/law-practice/case-law-appeals/recent/t870301ep1.html" target="_blank">here</a>.Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-3659537120253492694.post-88259292402020093922018-11-09T08:37:00.002+01:002018-11-13T08:53:03.898+01:00G 0003/14 - Clarity in oppostion proceedings - #16<div class="separator" style="clear: both; text-align: center;">
<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEh3JCgm9q_BkZLuH8ECMYFokwoLrn2M-flpMmsY44FamdwN3jSqRoZ2LpjoP9IhHfk3Ad640gJh4ZpYB0K1vH7vAz8tVPENGFnwksdw5EaQgmtv5OdNbC-RJ49oHCLN6uXOSQkl_dUTzOM/s1600/plot16.jpg" imageanchor="1" style="clear: right; float: right; margin-bottom: 1em; margin-left: 1em;"><img border="0" data-original-height="900" data-original-width="1200" height="240" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEh3JCgm9q_BkZLuH8ECMYFokwoLrn2M-flpMmsY44FamdwN3jSqRoZ2LpjoP9IhHfk3Ad640gJh4ZpYB0K1vH7vAz8tVPENGFnwksdw5EaQgmtv5OdNbC-RJ49oHCLN6uXOSQkl_dUTzOM/s320/plot16.jpg" width="320" /></a></div>
Citation rank: 16<br />
No. of citations: 186<br />
<br />
<b>G 3/14</b> 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) <br />
<br />
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.<br />
<br />
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]".<br />
<br />
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., <b>T 301/87</b>). Other Boards, starting with <b>T 1459/05</b>, 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.<br />
<br />
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.<br />
<br />
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).<br />
<br />
Under this concept, <i>e.g.</i>, 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.<br />
<br />
---<br />
<br />
<b>Headnote</b>:<br />
<blockquote class="tr_bq">
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.
</blockquote>
The full text of the decision can be found <a href="https://www.epo.org/law-practice/legal-texts/official-journal/2015/11/a102/2015-a102.pdf" target="_blank">here</a>. Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-3659537120253492694.post-41777296366541335862018-11-06T08:25:00.000+01:002018-11-06T08:25:09.155+01:00T 0219/83 - Burden of proof / Benefit of doubt - #17<div class="separator" style="clear: both; text-align: center;">
<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgnqBz2sWGLnxR0KALMp9pkezZqq4yQVdv4sdBUmdg-_wS00NOR-zSIuFtkyEqcRFGR8DDEHvmjAuKFqq_gGtPNNUjKqKRKg0VmBu3HSpRpaugmCJnTww9jTJ-m3K0ev8Soxl7evacMk7Y/s1600/plot17.jpg" imageanchor="1" style="clear: right; float: right; margin-bottom: 1em; margin-left: 1em;"><img border="0" data-original-height="900" data-original-width="1200" height="240" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgnqBz2sWGLnxR0KALMp9pkezZqq4yQVdv4sdBUmdg-_wS00NOR-zSIuFtkyEqcRFGR8DDEHvmjAuKFqq_gGtPNNUjKqKRKg0VmBu3HSpRpaugmCJnTww9jTJ-m3K0ev8Soxl7evacMk7Y/s320/plot17.jpg" width="320" /></a></div>
Citation rank: 17<br />No. of citations: 174<br />
<br />
<b>T 219/83</b> is concerned with issues of proof. In particular, <b>T 219/83</b> looks at a situation where parties to opposition-appeal proceedings make contrary assertions, and the Board is unable to establish which party is right.<br />
<br />
Claim 1 of the contested patent related to a process for the manufacture of a zeolite from silicon
dioxide and metal oxides, characterized (<i>i.a.</i>) 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.<br />
<br />
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.<br />
<br />
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. <br />
<br />
The Board noted that they themselves were unable to establish whether or not such methods existed. They stated in this regard:<br />
<blockquote class="tr_bq">
"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)</blockquote>
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.<br />
<br />
The patent was thus maintained (in slightly amended form).<br />
<br />
<u>Remark</u>: 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). <br />
<br />
---<br />
<br />
<b>Headnote</b>:<br />
<blockquote class="tr_bq">
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.</blockquote>
<br />
<blockquote class="tr_bq">
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.</blockquote>
The full text of the decision can be found <a href="https://www.epo.org/law-practice/case-law-appeals/recent/t830219ep1.htm" target="_blank">here</a>.<br />
<br />
Quotes from decisions citing T 219/83 can be found <a href="https://100mostcited.blogspot.com/p/decisions-citing-t-21983.html" target="_blank">here</a>.Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-3659537120253492694.post-76167508335212778352018-11-05T07:52:00.000+01:002018-11-05T07:52:03.222+01:00G 0007/93 - Review of first-instance discretionary decisions ("Late amendments") - #18<div class="separator" style="clear: both; text-align: center;">
<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhjAiYAEjCzQPMM0cCGT7TBYjq-CCHNukCczD2iFhzc8MRqmpXN_i3nMkCeRWumvAMBtE36m5PcOJf7yJ56h4TpV5J6DBA9LT15bYcVrhnzD8Ls48wvvsfoDfkpKLthJs-fyHcGgEKADC4/s1600/plot18.jpg" imageanchor="1" style="clear: right; float: right; margin-bottom: 1em; margin-left: 1em;"><img border="0" data-original-height="900" data-original-width="1200" height="240" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhjAiYAEjCzQPMM0cCGT7TBYjq-CCHNukCczD2iFhzc8MRqmpXN_i3nMkCeRWumvAMBtE36m5PcOJf7yJ56h4TpV5J6DBA9LT15bYcVrhnzD8Ls48wvvsfoDfkpKLthJs-fyHcGgEKADC4/s320/plot18.jpg" width="320" /></a></div>
Citation rank: 18<br />
No. of citations: 173<br />
<br />
<b>G 7/93</b> is primarily concerned with two provisions of the EPC1973, both of which no longer exist under the EPC2000. <b>G 7/93</b> 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 <b>G 7/93</b> deals with "Reservations" of contracting states under Art. 167 EPC1973, which also no longer exist. <br />
<br />
Given that <b>G 7/93</b> deals with provisions that no longer exist under the EPC2000, it is surprising to see a steep increase in citations of <b>G 7/93</b> after the EPC2000 came into force (see graph at top right).<br />
<br />
It turns out that <b>G 7/93</b> 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.<br />
<br />
In this context, the Enlarged Board in <b>G 7/93</b> stated:<br />
<blockquote class="tr_bq">
"It may be added that if an Examining Division has exercised its
discretion [<i>to allow or not to allow further amendments after formal approval was given by applicant to the text proposed for grant</i>] 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)</blockquote>
<blockquote class="tr_bq">
</blockquote>
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., <b>T 2355/09</b>, citing <b>G 7/93</b>).<br />
<br />
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.<br />
<br />
---<br />
<br />
<b>Headnote</b>:<br />
<blockquote class="tr_bq">
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.<br />
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.<br />
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.</blockquote>
The full text of the decision can be found <a href="http://documents.epo.org/projects/babylon/eponet.nsf/0/83C9C4D52FB30A17C12572C800711776/$File/g930007.pdf" target="_blank">here</a>.<br />
<br />
Quotes from decisions citing <b>G 7/93</b> can be found <a href="https://100mostcited.blogspot.com/p/decisions-citing-g-793.html" target="_blank">here</a>.<br />
Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-3659537120253492694.post-91828242822279306402018-11-02T08:11:00.003+01:002018-11-02T08:11:23.306+01:00G 0004/92 - Basis of decisions / Right to be heard - #19<div class="separator" style="clear: both; text-align: center;">
<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiWPnbxN3zV01qCdRNSlSV7wkrEkcnJW2p6UXXpz7_E-JSw_nq8kji5EbVTAFi-o1wmv9MpaVA29Kh4ludFo-fi2AqphLiUBKxXMBvl_Dhv8-5K3CdmOOOYy-Y-Irew56xjxTOq8CgC5zg/s1600/plot19.jpg" imageanchor="1" style="clear: right; float: right; margin-bottom: 1em; margin-left: 1em;"><img border="0" data-original-height="900" data-original-width="1200" height="240" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiWPnbxN3zV01qCdRNSlSV7wkrEkcnJW2p6UXXpz7_E-JSw_nq8kji5EbVTAFi-o1wmv9MpaVA29Kh4ludFo-fi2AqphLiUBKxXMBvl_Dhv8-5K3CdmOOOYy-Y-Irew56xjxTOq8CgC5zg/s320/plot19.jpg" width="320" /></a></div>
Citation rank: 19<br />
No. of citations: 166<br />
<br />
<b>G 4/92 </b>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.<br />
<br />
The case law regarding this question had been divergent:<br />
<br />
Decision <b>T 574/89</b> 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".<br />
<br />
<b>T 484/90,</b> on the other hand,<b> </b>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".<br />
<br />
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).<br />
<br />
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).<br />
<br />
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).<br />
<br />
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).<br />
<br />
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).<br />
<br />
---<br />
<br />
<b>Headnote</b>:<br />
<blockquote class="tr_bq">
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.<br />
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.</blockquote>
The full text of the decision can be accessed <a href="http://documents.epo.org/projects/babylon/eponet.nsf/0/6401B3B1F23F940CC12572C8006FE156/$File/g920004.pdf" target="_blank">here</a>.<br />
<br />
Quotes from decisions citing <b>G 4/92</b> can be found <a href="https://100mostcited.blogspot.com/p/r-000208-citing-g-000492-11-xiv.html" target="_blank">here</a>. Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-3659537120253492694.post-80677591331607293302018-10-30T08:14:00.001+01:002018-10-30T08:19:08.698+01:00T 0073/84 - Revocation by the patent proprietor - #20<div class="separator" style="clear: both; text-align: center;">
<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiXXnmwQcK-yQhAC2ulN0TwYJaI4gbx8fhVYA_5EK7HpEr5scFAXS7aZbWNxmROFVUnNQtm3lbQiUl2Sp_FXUrsTcKHuRU4Zn7gQpXHKKbAdX7-bY2kMLA40EbfLLYLvIq-zsEH1I6gQLI/s1600/plot20.jpg" imageanchor="1" style="clear: right; float: right; margin-bottom: 1em; margin-left: 1em;"><img border="0" data-original-height="900" data-original-width="1200" height="240" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiXXnmwQcK-yQhAC2ulN0TwYJaI4gbx8fhVYA_5EK7HpEr5scFAXS7aZbWNxmROFVUnNQtm3lbQiUl2Sp_FXUrsTcKHuRU4Zn7gQpXHKKbAdX7-bY2kMLA40EbfLLYLvIq-zsEH1I6gQLI/s320/plot20.jpg" width="320" /></a></div>
Citation rank: 20<br />
No. of citations: 162<br />
<br />
It is not foreseen in opposition and opposition-appeals procedures that the patentee requests revocation of his own patent. For example, such an outcome is not among the possible outcomes of an opposition division listed in <a href="https://www.epo.org/law-practice/legal-texts/html/epc/2016/e/ar101.html" target="_blank">Art. 101(2) and (3)</a>. The possibility for the proprietor of a European patent to request
revocation of its own patent was only added to the EPC2000 through the
limitation or revocation procedure according to Art. 105a-105c.<br />
<br />
In the opposition case underlying <b>T 73/84</b>, the Opposition Division had rejected the opposition and the patent was maintained unamended. The opponent appealed against this decision. At that stage, the patent proprietor referred to Legal Advice No. 11/82 (OJ (EPO) 2/1982, p. 57) and stated that, in order to
terminate the appeal proceedings, he no longer approved the text in
which the patent was granted and would not be submitting an amended
text. Legal Advice 11/82 stated that <i>in opposition proceedings</i>, if the applicant states that he no longer approves the text in which the patent was granted and does not submit an amended text, the patent must be revoked.<br />
<br />
The Board noted with respect to the same situation <i>in appeal proceedings </i>that:<br />
<blockquote class="tr_bq">
3. Since the text of the patent is at the disposition of the patent
proprietor, a patent cannot be maintained against the proprietor's will.
If the patent proprietor withdraws his approval, expressed before the
first instance, of the text of the patent as granted and declares that
he will not be submitting an amended text, it may be inferred that he
wishes to prevent any text whatever of the patent from being maintained.</blockquote>
<blockquote class="tr_bq">
4. However, the patent proprietor cannot terminate the proceedings by
telling the EPO that he is surrendering the European Patent, since this
is not provided for in the Convention. Thus he would only be able, as
far as national law permitted, to surrender the patent vis-à-vis the
national patent offices of the designated Contracting States under the
relevant national law.</blockquote>
<blockquote class="tr_bq">
5. At the same time, the proceedings ought
to be terminated as quickly as possible in the interests of legal
certainty, which calls for a clarification of the industrial rights
situation. The only possibility in such a case is to revoke the patent,
as envisaged for other reasons in Article 102 EPC. The practice followed
by the Opposition Divisions is thus confirmed.</blockquote>
Since then, withdrawal by the proprietor of his consent to the currently pending text (or texts) in appeal proceedings is used to terminate the appeal proceedings by revocation of the patent.<br />
<br />
---<br />
<br />
<b>Headnote</b>:<br />
<blockquote class="tr_bq">
If the proprietor of a European patent states in opposition or appeal
proceedings that he no longer approves the text in which the patent was
granted and will not be submitting an amended text, the patent is to be
revoked.</blockquote>
The full text of the decision can be found <a href="https://www.epo.org/law-practice/case-law-appeals/recent/t840073ep1.html" target="_blank">here</a>.<br />
<br />
See <a href="https://100mostcited.blogspot.com/2018/09/t-018684-request-for-revocation-by.html" target="_blank"><b>T 186/84</b></a> on the same issue in opposition proceedings. Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-3659537120253492694.post-69228652825910986222018-10-30T07:32:00.000+01:002018-10-30T07:32:52.064+01:00G 0005/83 - Second medical indication - #21<div class="separator" style="clear: both; text-align: center;">
<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiU6l-ji-HB4RTPa3JVZoBnKCMhWhYA4JmFBCvbg0b1yZOR7YTJ9_wta4jBQYGqnFZD5CXOsfTjeVWk8qis9-6aLlSak3pkSfXnWpDqg5JuTfGTchmS7KPYDTEEoIAzfaU4lihd8oR_VU4/s1600/plot21.jpg" imageanchor="1" style="clear: right; float: right; margin-bottom: 1em; margin-left: 1em;"><img border="0" data-original-height="900" data-original-width="1200" height="240" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiU6l-ji-HB4RTPa3JVZoBnKCMhWhYA4JmFBCvbg0b1yZOR7YTJ9_wta4jBQYGqnFZD5CXOsfTjeVWk8qis9-6aLlSak3pkSfXnWpDqg5JuTfGTchmS7KPYDTEEoIAzfaU4lihd8oR_VU4/s320/plot21.jpg" width="320" /></a></div>
Citation rank: 21<br />
No. of citations: 162<br />
<br />
<b>G 5/83 </b>is one of seven(!) parallel cases before the Enlarged Board of Appeals, all dealing with the question of whether or how inventions relating to a "second medical indication" of a chemical compound or composition can be protected under the EPC. These seven decisions were also the very first decisions delivered by Enlarged Board of Appeal. <br />
<br />
At the time of <b>G 5/83 </b>there was (and still is today) considerable interest in protecting inventions relating to the "second medical use" or "second medical indication" of chemical entities, i.e., where the compounds or compositions were already known to be useful as medicaments, but for a different disease/in a different indication. The difficulty was that Art. 52(4) EPC1973 in did not allow claims to "methods for treatment of the human or animal body by therapy". More specifically, Art. 52(4) EPC1973 stipulated that such methods were not susceptible of industrial application, one of the three basic patentability requirements. (The exclusion from patentability of therpeutic methods is still present in the EPC2000, but it is implemented in a different manner, namely it is formulated as an "exception to patentability" under Art. 53(c) EPC.)<br />
<br />
The German High Court ("Bundesgerichtshof", BGH) had already decided that, under German national law, the
subject-matter of a claim directed to the use of a chemical substance to
treat an illness extends beyond the treatment of the illness, namely to the
preparation for use ("augenfällige Herrichtung"), which, according to the BGH, includes at least
the packaging of the substance with instructions for use in the
treatment of the illness. A claim directed to the use of a compound to treat an illness could therefore be used in German national
law to protect the "second (or further) medical indication".<br />
<br />
The Enlarged Board, however, did not agree with the findings of the BGH. In particular, the Enlarged Board found that there was in principle no difference between a method claim and a use claim; it was merely a matter of preference of the applicant whether to formulate a method claim as use claim or <i>vice versa</i>. In this regard, the Enlarged Board stated:<br />
<blockquote class="tr_bq">
11. The European Patent Convention, in general, allows both method
claims and use claims but whether any activity is claimed as a method of
carrying out the activity (setting out a sequence of steps) or as the
use of a thing for a stated purpose (the sequence of steps being
implied), is, in the opinion of the Enlarged Board, a matter of
preference. For the European Patent Office there is no difference of
substance. In the context of the present case, this means that any
artificial distinction according to which, when the invention concerns
the employment of a substance or composition for therapy, a method claim
excludes and a use claim includes at least the preparation of a
pharmaceutical product, with instructions for use in the treatment of
illness (which has been called in German the "augenfällige
Herrichtung"), cannot be accepted, because in both cases the active
substance or composition for therapy must be in a state capable of
exerting its therapeutic activity and this necessarily means that the
active material has been formulated and made up into doses. </blockquote>
Since a second-medical indication claim in the form of a "use claim" was no different than the corresponding claim formulated as "method claim" (the latter being expressly excluded from patentability), no patent could be granted according to the Enlarged Board on a second-medical use claim irrespective of whether it was formulated as "use" or "method claim":<br />
<blockquote class="tr_bq">
13. For the reasons already given, in the considered opinion of the
Enlarged Board, a claim directed to the "use of a substance or
composition for the treatment of the human or animal body by therapy" is
in no way different in essential content from a claim directed to "a
method of treatment of the human or animal body by therapy with the
substance or composition". The difference between the two claims is one
of form only and the second form of claim is plainly in conflict with
Article 52(4) EPC. Since this is so, no patent can be granted including
any such claims: Article 97(1) EPC.</blockquote>
The Enlarged Board, however, recognised that Article 54(5) EPC1973 provided for the possibility to protect inventions based on the "first medical indication" of a compound or composition, namely in the form of a purpose-limited product claim. The Enlarged Board noted that, apparently, no problem arose
with respect to susceptibility of industrial application of such an invention, within the meaning
of Article 57 EPC. Furthermore, from the Articles and Rules of the EPC1973, as well as from its legislative history, the Enlarged Board concluded that<br />
<blockquote class="tr_bq">
"[n]o intention to exclude second (and further) medical indications
generally from patent protection can be deduced from the terms of the
European Patent Convention: nor can it be deduced from the legislative
history of the articles in question." (point 22 or reasons)</blockquote>
The Enlarged Board then considered a statement made by the Swiss Federal Intellectual Property Office, stating that they allowed claims to second-medical use inventions in the form of a use claim directed to the use of a
substance or composition for the manufacture of a medicament for a
specified (new) therapeutic application (point 19 of the reasons).<br />
<br />
The Enlarged Board concluded that it is legitimate to allow claims directed to the use of a substance or
composition for the manufacture of a medicament for a specified new and
inventive therapeutic application, even in a case in which the process
of manufacture as such does not differ from known processes using the
same active ingredient (point 23 of the reasons).<br />
<br />
That claim format was since then referred to as the "Swiss-type claim". It was the claim format of choice to protect second medical indications under the EPC up until <b>G 2/08</b> ("Dosage regime"). This decision held that under the new wording of the EPC2000 (which allowed purpose-limited product protection for second medical indications, Art. 54(5) EPC), there was no longer room for second-medical use claims in Swiss-type format. The purpose-limited product claim should be used instead.<br />
<br />
---<br />
<br />
<b>Headnote</b>:<br />
<blockquote class="tr_bq">
I. A European Patent with claims directed to the use may not be granted for the use of a substance or composition for the treatment of the human or animal body by therapy.<br />
II. A European patent may be granted with claims directed to the use of a substance or composition for the manufacture of a medicament for a specified new and inventive therapeutic application.</blockquote>
The full text of the decision can be accessed <a href="http://archive.epo.org/epo/pubs/oj1985/p059_094.pdf" target="_blank">here</a>.Unknownnoreply@blogger.com0tag:blogger.com,1999:blog-3659537120253492694.post-52984689553360372022018-10-25T07:58:00.001+02:002018-10-26T08:06:05.138+02:00G 0001/99 - Reformatio in peius - #22<div class="separator" style="clear: both; text-align: center;">
<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgwk6Ln1aBlK2RaZ_vCNSuePbdrGOd1LxTJ6WV9zrDJk1FEAUXsHDJjd6Lud8O_wrJ2lrUa062KFeKBCNhDGDo5BpqTgboIQqQ13l6cC55DcaxYmGTZ3cBYD2pJPaR8Pnup2KhT-CWlZ7A/s1600/plot22.jpg" imageanchor="1" style="clear: right; float: right; margin-bottom: 1em; margin-left: 1em;"><img border="0" data-original-height="900" data-original-width="1200" height="240" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgwk6Ln1aBlK2RaZ_vCNSuePbdrGOd1LxTJ6WV9zrDJk1FEAUXsHDJjd6Lud8O_wrJ2lrUa062KFeKBCNhDGDo5BpqTgboIQqQ13l6cC55DcaxYmGTZ3cBYD2pJPaR8Pnup2KhT-CWlZ7A/s320/plot22.jpg" width="320" /></a></div>
Citation rank: 22<br />
No. of citations: 161<br />
<br />
Further to <b>G 4/93</b> (and <b>G 9/92</b>), <b>G 1/99</b> also looks at the consequences of the principle of party disposition, namely the prohibition of <i>reformatio in peius</i>, in opposition-appeal proceedings where the Opposition Division has upheld the patent in amended form.<br />
<br />
<b>G 4/93 </b>held that in such cases, if the proprietor is the sole appellant, neither the Board nor the non-appealing opponent may challenge the maintenance of the patent in amended form (<b>G 4/93</b>, Headnote I)<br />
<br />
In the case where the opponent is the sole appellant, <b>G 4/93 </b>held that the proprietor is primarily restricted to defending the patent in the form in which it was maintained by the Opposition Division. Amendments proposed by the patent proprietor, however, may be rejected as inadmissible by the Board "if they are neither appropriate nor necessary" (<b>G 4/93</b>, Headnote II; see <a href="https://100mostcited.blogspot.com/2018/10/g-000493-non-appealing-party-23.html" target="_blank">here</a> for a brief summary of <b>G 4/93</b>).<br />
<br />
<b>G 1/99</b> now takes a closer look at the latter situation, where the opponent is the sole appellant. In particular, <b>G 1/99</b> explains how the expression "... if they are neither appropriate nor necessary" in Headnote II of <b>G 4/93</b> is to be understood.<br />
<br />
The Enlarged Board in <b>G 1/99</b> generally confirmed that the principle of party disposition, and thus the prohibition of <i>reformtio in peius, </i>applies under the EPC (see point 8 of the reasons). However, the principle is not to be applied unconditionally. They stated:<br />
<blockquote class="tr_bq">
"... Taking into consideration that in appeal proceedings before the EPO the
application of the principle of prohibition of <i>reformatio in peius
</i>derives from its own case law, the Enlarged Board of Appeal has also to
weigh the consequences of this application, if it appears that they
might be unsatisfactory." (point 11 of the reasons)</blockquote>
They considered that in the case where the opponent is the sole appellant against a decision of the Opposition Division to maintain the patent in amended form, it would be inappropriate <u>not</u> to allow the proprietor to amend his claims, if such amendment is necessary to undo an Art. 123(2) violation, which occurred during the opposition procedure, and which was allowed by the Opposition Division. Such amendments are to be allowed, even if it meant that the opponent and sole appellant is put is a worse situation than if he had not appealed, <i>i.e.</i>, even if the opponent is thereby hit by <i>reformatio in peius</i>. In such situations, <i>reformatio in peius </i>was exceptionally allowed.<br />
<br />
The Enlarged Board, however, did not allow any type of amendment. In order to restrict the negative effect of the amendment on the opponent to a minimum, the Enlarged Board held that in such a case, the proprietor may, in this order,<br />
<ol>
<li>amend the claims by introducing one or more
originally disclosed features which limit the scope of the patent as
maintained (in this situation the opponent and sole appellant does not suffer from <i>reformatio in peius</i>);</li>
<li>If this is not possible, amend the claims by introducing
one or more originally disclosed features which extend the scope of the
patent as maintained, but of course not extending beyond the scope of the patent as granted (Art. 123(3) (here <i>reformatio in peius</i> occurs);</li>
<li>If amendments under 1 and 2 are not possible, the proprietor may delete the feature which led to the Art. 123(2) infringement, but within the limits of Article 123(3) EPC (here <i>reformatio in peius </i>is even worse).</li>
</ol>
Generally, the prohibition of <i>reformatio in peius</i> is more strictly applied in cases where the proprietor is the sole appellant, as compared to where the opponent is the sole appellant. The Enlarged Board considered this "un-symmetrical" application of the principle of <i>reformatio in peius</i> justified, <i>i.a.</i>, because a losing opponent has further opportunity to invalidate the European patent in national invalidity proceedings, whereas a proprietor, who's patent is revoked in opposition/appeal proceedings before the EPO, has lost its patent for good.<br />
<br />
---<br />
<br />
<b>Headnote</b>:<br />
<blockquote class="tr_bq">
In principle, an amended claim, which would put the opponent and sole
appellant in a worse situation than if it had not appealed, must be
rejected. However, an exception to this principle may be made in order
to meet an objection put forward by the opponent/appellant or the Board
during the appeal proceedings, in circumstances where the patent as
maintained in amended form would otherwise have to be revoked as a
direct consequence of an inadmissible amendment held allowable by the
Opposition Division in its interlocutory decision. </blockquote>
<blockquote class="tr_bq">
In such circumstances, in order to overcome the deficiency, the
patent proprietor/respondent may be allowed to file requests, as
follows: </blockquote>
<blockquote class="tr_bq">
- in the first place, for an amendment introducing one or more
originally disclosed features which limit the scope of the patent as
maintained; </blockquote>
<blockquote class="tr_bq">
- if such a limitation is not possible, for an amendment introducing
one or more originally disclosed features which extend the scope of the
patent as maintained, but within the limits of Article 123(3) EPC; </blockquote>
<blockquote class="tr_bq">
- finally, if such amendments are not possible, for deletion of the
inadmissible amendment, but within the limits of Article 123(3) EPC.</blockquote>
The full text of the decision can be found <a href="http://documents.epo.org/projects/babylon/eponet.nsf/0/D64B45711A089869C12572C80062D998/$File/09_3811.pdf" target="_blank">here</a>.<br />
<br />
Quotes from decisions citing <b>G 1/99</b> can be found <a href="https://100mostcited.blogspot.com/p/decisions-citing-g-199.html" target="_blank">here</a>. Unknownnoreply@blogger.comtag:blogger.com,1999:blog-3659537120253492694.post-15221158096879454382018-10-23T08:53:00.000+02:002018-12-04T08:32:19.864+01:00G 0004/93 - "Non-appealing party" - #23<div class="separator" style="clear: both; text-align: center;">
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Citation rank: 23<br />
No. of citations: 146<br />
<br />
<b>G 4/93</b> (in consolidated proceedings with <b>G 9/92</b>, see same review <a href="https://100mostcited.blogspot.com/2018/12/g-000992-non-appealing-party-7.html" target="_blank">here</a>) looked at the consequences of the "principle of party disposition" on <i>inter partes </i>opposition-appeal proceedings.<br />
<br />
Two
Boards of Appeal referred questions to the Enlarged Board of Appeal
under Art. 112(1)(a) EPC. The questions arose from three appeal cases,
all of which were concerned with an appeal against the decision of an
oppositon division to maintain the patent in amended form according to Art.
101(3)(a) EPC. In one case the proprietor was the sole appellant, in
another case only the opponent appealed. In the third case both parties
appealed.<br />
<br />
The Technical Boards referred the question whether a Board
of Appeal, in proceedings before it, could put the sole appellant in a
worse position than
if it had not appealed, or whether there should be
prohibition of <i>reformatio in peius</i> (Latin: "change for the worse"). Specifically, they asked the Enlarged Board:<br />
<blockquote class="tr_bq">
"Can the Board of Appeal amend a contested decision to the Appellant's disadvantage? - If so, to what extent?"</blockquote>
The
Enlarged Board pointed out that the proceedings before the EPO are
generally goverened by the principle of party disposition, <i>i.e.</i>,
that the parties define the extent of the proceedings through their
intial requests. This principle is also known as the principle of "<i>ne
ultra petita</i>" (Latin: "not beyond the request").<br />
<br />
The Enlarged Board mentioned that decisions <b>G 9/91</b> and <b>G 10/91</b>
already clarified that the principle of party disposition applies to
opposition and opposition-appeal proceedings before the EPO (see <b>G 4/93</b>, points 3 and 4 of the reasons). The principle of <i>ex officio </i>examination
(Art. 114(1) EPC), on the other hand, found little application in
appeal proceedings (points 4 and 5 of the reasons).<br />
<br />
Under
the principle of party disposition, in opposition-appeal cases in which the patent is maintained in amended form, the appeal <i>of the proprietor</i>,
who is the sole appellant, can only be understood as a request of the
proprietor-appellant to maintain its patent in unamended form, or at
least with a scope somewhere between that of the patent upheld in
opposition and the scope as granted. In any case, the proprietor's
appeal cannot be interpreted as being a request to further limit the
appellant's patent. Therefore, the Enlarged Board in <b>G 4/93</b> found that it would be
against the principle of party disposition to limit a patent to less
than the scope maintained in opposition, <i>if the proprietor is the sole appellant</i> (see <b>Headnote I</b>).<br />
<br />
Where
<i>the opponent</i> is the sole appellant, the situation is the opposite. It
would be against the principle of party disposition, if an Appeal Board <i>broadened</i> the scope of the patent (<i>e.g.</i>,
maintained the patent as granted). This would certainly be against the
opponent/sole appellant's initial request. The proprietor is thus
primarily restricted to defending the
patent in the form in which it was maintained by the Opposition Division
(see <b>Headnote II</b>).<br />
<br />
If both, the proprietor and the
opponent, appeal against the decision to uphold the patent in amended
form, the principle of party disposition clearly can no longer be
fully observed. This is impossible, because of the parties' initial requests
are contradicting. In this situation, an Appeal Board is free to broaden
or lessen the scope of the patent as mainteined by the opposition
division all the way from maintenance as granted to revocation in full.<br />
<br />
<u>Remark</u>: <b>G 1/99</b>
("Reformatio in peius") later took a closer look at the situation in
which the opponent is the sole appellant (Headnote II, below). <b>G 1/99</b>
exceptionally allowed broadening of the scope of the claims (beyond the
scope of the claims maintained in opposition, but within the limits of
Art. 123(3)) in the case where the proprietor would otherwise lose its
patent because of a Art. 123(2) infringement which occurred during the
opposition stage. The cautious wording "may be rejected as inadmissible
by the Board of
Appeal if they are neither appropriate nor necessary" in Headnote II,
below, was thus interpreted as as allowing certain exceptions. See <a href="https://100mostcited.blogspot.com/2018/10/g-000199-reformatio-in-peius-22.html" target="_blank">here</a> for a brief summary of <b>G 1/99</b>.<br />
---<br />
<br />
<b>Headnote</b>:<br />
<blockquote class="tr_bq">
I. If the patent proprietor is the sole appellant against an
interlocutory decision maintaining a patent in amended form, neither the
Board of Appeal nor the non-appealing opponent as a party to the
proceedings as of right under Article 107, second sentence, EPC, may
challenge the maintenance of the patent as amended in accordance with
the interlocutory decision.</blockquote>
<blockquote class="tr_bq">
II. If the opponent is the sole appellant against an interlocutory
decision maintaining a patent in amended form, the patent proprietor is
primarily restricted during the appeal proceedings to defending the
patent in the form in which it was maintained by the Opposition Division
in its interlocutory decision. Amendments proposed by the patent
proprietor as a party to the proceedings as of right under Article 107,
second sentence, EPC, may be rejected as inadmissible by the Board of
Appeal if they are neither appropriate nor necessary.</blockquote>
The full text of the decision can be found <a href="https://www.epo.org/law-practice/case-law-appeals/recent/g930004ex1.html" target="_blank">here</a>. Unknownnoreply@blogger.comtag:blogger.com,1999:blog-3659537120253492694.post-16180288343450385352018-10-21T12:02:00.002+02:002018-10-21T12:05:18.153+02:00T 0020/81 - Alleged advantages must be proven - #24<div class="separator" style="clear: both; text-align: center;">
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Citation rank: 24<br />
No. of citations: 146<br />
<br />
<b>T 20/81</b> looked at a case where the applicant based its inventive step argumentation on alleged advantages of his invention over the prior art; the alleged advantages, however, were not demonstrated by the evidence presented.<br />
<br />
Claim 1 of the underlying application related to a process for the preparation of meta-aryloxy-benzaldehydes by reaction of
a mixture of the corresponding meta-aryloxybenzyl halides and
meta-aryloxy-benzal halides with hexamethylene tetramine followed by
hydrolysis of the resulting products.<br />
<br />
The Examining Division refused the application for lack of inventive step over Dutch patent application NL-A-7 701 128 and a textbook chapter (Organic Reactions Vol. III, 1954, John Wiley, New York, Chapter 4, S. H. Angyal). The process disclosed in NL-A-7 701 128 used acid in the reaction mixture, which required the use of acid-resistant reaction vessels. The applicant formulated the technical problem as lying in the provision of an improved process, which avoids the negative effects of the acid in the reaction mixture. The argument, however, did not convince the Examining division.<br />
<br />
In appeal, the appellant-applicant reformulated the technical problem. According to the appellant, the problem was not simply to eliminate the
disadvantages emerging from the use of an acid in the process of the
NL-A-7 701 128, but to generally improve the known process for preparing
meta-phenoxy benzaldehyde. Based on a comparative example (example 5), he claimed that the claimed process could be carried out in less time and at a slightly higher yield.<br />
<br />
The Board commented as follows:<br />
<blockquote class="tr_bq">
"Moreover, the applicant refers to the advantage that hydrolysis can now be carried out in a shorter time to obtain a slightly higher yield of POAL (page 2, lines 10-12). This advantage is said to be proven by the results of the comparative example within example 5 on file. Contrary to the submission of the applicant, the comparison is not pertinent, since different temperatures were used, namely 110° C for the hydrolysis step pursuant to the present application, but only 106°C for that of the old Shell process. It is well known that the employment of different reaction temperatures entails a different speed of reaction. In general, a rise of temperature by 10°C will cause the speed to double or triple." (point 3 of the reasons)</blockquote>
The Board thus carefully compared the claimed process with the process described in comparative example 5 and found that the alleged advantages, on which the appellant-applicant relied, were not proven by those experiments.<br />
<br />
The Board drew the following conclusion: <br />
<blockquote class="tr_bq">
"Consequently, the conclusion must be drawn that the additional
advantages referred to by the appellant have not been properly
demonstrated. Such alleged but unsupported advantages cannot be taken
into consideration in respect of the determination of the problem
underlying the application. For this reason, the problem the applicant
must have faced remains the one already defined." (point 3 of the reasons)</blockquote>
Applying the former technical problem, the Board agreed with the Examining Division's conclusion that the claimed process did not involve an inventive step.<br />
<br />
The appeal was rejected.<br />
<br />
---<br />
<br />
<b>Headnote</b>:<br />
<blockquote class="tr_bq">
In order to render them relevant to the definition of the problem
underlying the invention, and hence to the assessment of inventive
step, alleged advantages should be supported by sufficient evidence
where comparison is made with highly pertinent prior art.</blockquote>
The full text of the decision can be accessed <a href="https://www.epo.org/law-practice/case-law-appeals/recent/t810020ep1.html" target="_blank">here</a>.<br />
<br />
See also <b><a href="https://100mostcited.blogspot.com/2018/09/t-018182-comparative-tests-must-be-with.html" target="_blank">T 181/82</a></b> on a related issue. Unknownnoreply@blogger.com