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