3 March 2017
2016 saw what was hoped to be the end of the Broccoli and Tomatoes cases (see our articles on T 915/10 and T 1242/06) which has now been somewhat complicated by the EPO’s stay in response to a Notice from the EU Commission (reported here); as well as the Enlarged Board’s order in the ‘poisonous divisionals’ issue (see our comments on G 1/15). The latest referral to the Enlarged Board on the allowability of undisclosed disclaimers provides some hope that this issue will also be resolved more fully (see our article on G 1/16, arising from questions raised in T 437/14).
As part of our regular reports on interesting decisions from the Boards of Appeal, we have also discussed the practice of the Boards of Appeal in accepting – or not – late submissions (T 971/11 and T 416/12), as well as a possible change in practice in relation to the principles of reformatio in peius (T 2129/14) and res judicata (T 308/14); and the Board’s approach to suspected partiality by the EPO Opposition Division (T 1647/15).
Other cases we have reported on this year include deliberations by the Board of Appeal on “hidden” technical features in the prior art (T 2517/11) as well as on the concept of theoretical public disclosures (T 1410/14); what constitutes proof “up to the hilt” for prior use (T 2451/13); what constitutes an “enabling disclosure” (T 719/12); the correction of clerical errors in EPO oppositions (T 615/14); what constitutes a technical contribution to the art (T 1370/11); and the relationship between Swiss-type claims and second medical use claims (T 1673/11).
On procedural matters, there was also news on the new streamlined opposition procedure, as well as on the possibility that correspondence with the EPO during opposition proceedings might be made public (T 1691/15).
Here, we provide a non-exhaustive summary of a number of other decisions of the Technical Boards of Appeal with a distribution code of C (to Board chairmen) or higher (to Board members or even published in the Official Journal).
1. Is it enough that a new claim request is based on a request previously filed, or a claim as granted?
Just prior to oral proceedings before the Board, the patentee submitted a new main request which included a feature that was only present in three of the 10 auxiliary requests submitted with its grounds of appeal. The patentee argued that this new request was in effect timely filed because the feature now claimed had been present in the grounds of appeal and that the opponent had therefore had sufficient time to consider the amendment. The Board held, however, that the patentee had provided no explanation in its grounds of appeal in relation to the amendments presented in the auxiliary requests. The Board emphasised that the mere filing of amended claims does not exonerate the patentee from the task of expressly specifying in its grounds of appeal the relevance of the amendments. There was no information in the patentee’s grounds about why the 10 auxiliary requests were filed and thus the opponent could only have speculated about what purpose the amendments served. The fact that the feature was also present in granted claim 3 was also not an acceptable reason for admitting the new request: the Board noted that there were eight further product claims, each of which specified a variety of parameters. The Board held that it was not reasonable to expect the opponent to test each of these parameters against the prior art, just in case the patentee might file a claim request directed to that feature during the appeal proceedings. (T 1533/13)
2. Is an appeal against a decision to grant a patent admissible when the decision is consistent with the text approved by the applicant?
The patentee filed an appeal against a decision to grant a patent and requested the correction of obvious errors in the claims of the patent and that a new decision to grant be issued. However, the errors in the claims were present in the text accompanying the official communication indicating the EPO’s intention to grant a patent, and the applicant had paid the required fees and filed the required claims translations, and so was deemed to have approved the text. The Board decided that the appeal was inadmissible because the appellant was not adversely affected by the decision to grant. The applicant’s unreserved approval of the text intended for grant meant that it could not be adversely affected. The Board referred to the Enlarged Board’s decision G 1/10, which elaborated on the possibilities of correcting errors in the intention to grant and the decision to grant, but found that the Enlarged Board’s decision did not allow corrections in the current circumstances. The Board did, however, reimburse the appeal fee as it found that the appellant had relied upon incorrect advice given by a formalities officer that an appeal would be possible. (T 1785/15)
3. How does the Board use its discretion as to whether to admit new arguments into the appeal proceedings?
At oral proceedings before the Board, one of the opponents began discussing inventive step starting from document D1 in view of document D13. The opponent then for the first time began arguing that the same subject matter lacked inventive step starting from D13 in view of D1. The patentee objected that this new argument should not be admitted. The Board noted that Article 13(1) of its rules of procedure provides that any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted at the Board's discretion. The Board considered whether the new argument was a departure from, or just a development of, the original arguments (citing T 1621/09). The Board found that the new argument could not be considered merely as a development because the new analysis is based on a different closest prior art document and so different reasons need to be considered as whether the distinguishing features are obvious. Therefore, it could only be admitted at the Board’s discretion. Nevertheless, the Board exercised its discretion and admitted the new argument for various reasons, one of which was that the patentee could reasonably have foreseen from the Board’s provisional opinion that such a new argument could become a subject of discussion. In the end, however, despite the new argument, the Board found that the subject matter had inventive step. (T 55/11)
4. If claims are withdrawn during oral proceedings before the Opposition Division to ensure an efficient procedure, can they be reintroduced before the Board of Appeal?
The patentee withdrew its fourth auxiliary request during oral proceedings before the Opposition Division. On appeal, the patentee tried to reintroduce the request before the Board. The patentee argued that it had withdrawn the request to ensure an efficient procedure because the Division had made it clear at the beginning of proceedings that only a limited number of requests would be allowed. The Board refused to admit the request. The Board referred to previous case law of the Boards and Enlarged Boards which stated that “the purpose of inter partes appeal procedure is mainly… to obtain a judicial ruling on whether the decision of the opposition division is correct”. The Board found that, according to case law, the result is that “parties to first-instance proceedings are not at liberty to bring about the shifting of their case to the second instance as they please, and so compel the Board of Appeal either to give a first ruling on the critical issues or to remit the case to the department of first instance.” The Board found that, therefore, the request was not admissible. (T 1689/12)
5. Is it permissible to add independent claims to a set of claims whose validity cannot be challenged in appeal proceedings?
In the same case, the patentee was the sole appellant against a decision of the Opposition Division to maintain the patent in amended form. As the patentee was the sole appellant, the opponent could not challenge the validity of the maintained claims. On appeal, the patentee sought to add further independent claims to the maintained claims. The opponent objected that the amendment is not allowable as it is not occasioned by a ground of opposition (Rule 80 EPC). The opponent argued that new independent claim 2 was a preferred embodiment of maintained claim 1. Therefore, the opponent argued, adding a further independent claim was not occasioned by a ground of opposition. The Board disagreed and noted that claim 2 was not in fact a preferred embodiment of maintained claim 1 as claim 2 did not include all the features of claim 1. The Board referred to T 181/02 which allows in exceptional cases the replacement of a granted single independent claim by two independent claims where a granted independent claim covers two specific embodiments. The Board viewed the present case as such an exceptional case and so allowed the amendment. (T 1689/12)
6. Is an appeal admissible if the appeal is filed late due to a secondary decision being issued by the EPO?
The application was refused following oral proceedings at the Examining Division and a decision in writing was subsequently dispatched. Obvious errors were found in the written decision, and the applicant requested correction, which subsequently issued. The appellant-applicant filed an appeal, but calculated the deadlines for requesting the appeal based on the subsequently issued corrected decision, instead of the original decision. As a consequence, the notice of appeal was filed on time, but the statement of grounds was not. Since the EPO did not correctly and unambiguously identify the second written decision to be a correction (which would clarify that the deadlines should be calculated from the first decision), rather than a new decision, the Board held (albeit not entirely without hesitation) that the appeal was filed in time. (T 105/11)
7. Should documents filed late during opposition, and then additional documents filed in an appeal, be admitted into proceedings?
The opponent appealed against the interlocutory decision of the opposition division to maintain the patent in amended form. D5 was submitted late during the opposition proceedings (ie later than nine months after grant, and eight months after the summons to oral proceedings was sent), and not admitted into proceedings by the Opposition Division, as it was filed late and not prima facie relevant. D5 was re-submitted in the appeal, along with D6 to D9, and G10 to G13, which the appellant alleged related to already known technologies. In response to the summons to oral proceedings before the Board of Appeal, the appellant submitted further documents D10 to D12. The Board maintained that the patent, in amended form, had inventive step over D1, the closest prior art, and D2 to D4. The Board refused to admit D5 to D12 and G10 to G13, as they were submitted late, were not prima facie relevant, or related to subject matter that was too far from the invention. The appeal was dismissed and the patent maintained in amended form. (T 917/11)
8. Does a change in address of the patentee to another jurisdiction constitute a change in entity?
The appeal was filed by the patentee in respect of the Opposition Division’s decision to revoke the patent. The patentee-appellant filed the appeal using the company address in the British Virgin Islands. At the time the appeal was filed, the company address was actually in Mauritius, and there was evidence, presented by the respondent, that the appellant had ceased to exist due to discontinuation of the company in the BVI (due to it being a cross-border transfer). The respondent requested that the appeal be rejected. The appellant presented evidence of the address changes, and submitted that the change of address did not constitute a change in company entity. The Board of Appeal was satisfied that the appellant presented sufficient evidence to prove that the appellant had not changed its legal entity by moving from BVI to Mauritius. Whilst a “wrong address” was provided in the appeal, the Board was satisfied that the notice of appeal indicated the appellant’s name, and address, its nationality and state within the two-month period for appealing. The Board agreed that the address could be corrected under Rule 139 EPC. The appeal was allowed, but ultimately failed as none of the requests were considered allowable. (T 1458/12)
9. Should requests be admitted on appeal if they are divergent from the requests filed during opposition?
This relates to an appeal of the Opposition Division’s decision to revoke a patent (on the grounds of clarity, added subject matter and patentability). In response to the summons to oral proceedings, the patentee-appellant (using a new representative) requested that the patent be maintained based on a main request or one of auxiliary requests 1 to 5, submitted a month before oral proceedings. The appellant submitted a further auxiliary request 6 less than a week before oral proceedings, and a further auxiliary request 7 on the day of the oral proceedings. The main request and auxiliary requests 1 and 2 were variations of requests filed during opposition proceedings, but with removal of some features. The Board refused to admit these requests, as they were late-filed and would result in a need to re-open the case to assess yet a further ground. Auxiliary requests 3 and 4 again were amended compared to the equivalent requests submitted during opposition. However, computer program product claims (claims 3 and 4) were removed. Since the main independent claims were unchanged, these requests were admitted, but were deemed to lack inventive step. Auxiliary request 5 was admitted but lacked inventive step. Auxiliary requests 6 and 7 were not admitted, since auxiliary request 6 was related to auxiliary request 3, and auxiliary request 7 represented a change in direction by the patentee. Since the admitted requests were lacking inventive step, the appeal was dismissed. (T 497/11)
Added subject matter (Article 123(2) EPC)
10. What counts as “clearly and unambiguously derivable” from the application as filed?
The Opposition Division had revoked the patent on the basis of a claim request which recited a liquid formulation having a particular range of viscosity values at 25 degrees C. The Opposition Division had held that the recitation of “at 25 degrees C” could not be directly and unambiguously derived from the application as filed. In the Board’s view, however, the application clearly disclosed that viscosity was an issue and that the invention was directed to providing a formulation with reduced viscosity. The fact that the temperature claimed was not literally disclosed in the context of the claimed viscosity values was not relevant in the Board’s view, since the application did disclose 25 degrees C as the preferred temperature of use. In particular, the application specified that the preferred temperature of reconstitution is 25 degrees C; and that the viscosity measurement is accomplished at 25 degrees C in all of the examples which fall within the claims. Accordingly, the Board accepted that there was basis for reciting the claimed temperature value together with the claimed viscosity range. (T 99/13)
Clarity and support (Article 84 EPC)
11. What is required to allow a claim which defines a result to be achieved?
The Examining Division had refused a claim which was directed to a coated article and which recited that the coated article has a ΔE* value (glass side) no greater than 2.5 after or due to heat treatment. The appellant argued that this feature was no more than a limitation to the other features present in the claim, such that the skilled person reading the claim would know that the other features of the claim needed to be adapted such that the ΔE* value was complied with. The Board held however that the application itself was directed to low-E coated articles, such that the claimed feature relating to the ΔE* value is defined as a result to be achieved which corresponds essentially to the problem underlying the application. The Board confirmed, following established case law, that all the structural features essential for achieving that effect must be present in the claim. Since this was not the case, the claim could not be allowed. (T 809/12)
12. Is a claim for a computer program that is defined by reference to a claimed method clear?
Previously filed main and auxiliary requests during examination were found to contain unallowable added matter. On appeal, the applicant filed a main request and first and second auxiliary requests, but did not attend the appeal hearing. One of the claims was of the form “A computer program resident on computer-readable material and comprising a set of instructions arranged to cause a computer, or suite of computers, to perform the method of any one of claim 16 to claim 30”. The Board of Appeal found various claims in each of the requests to lack clarity under Article 84 EPC. On the matter of the computer program claim that referenced the method claims, this also was found to be unclear under Article 84 EPC, as several of the method claims, on which the computer program claim depended, were unclear as to how the method steps would be executed solely by a (single) computer program. Other of the dependent claims were unclear as to how specified parameters would define or limit the claimed computer program. The appeal was dismissed. (T 1722/11)
Novelty (Article 54 EPC)
13. Does the sale of executable computer program code prior to the priority date of an application constitute public prior use of the invention?
The patent was opposed on the grounds of novelty, inventive step and sufficiency. One point of novelty was that software containing the claimed computer-implemented methods (for simulating fluid flow) was released to the public prior to the priority date of the patent. This point was not contested by the patentee, who argued that the disclosure did not amount to an enabling disclosure since the skilled person would not be able to reconstruct the underlying mathematical method from the disassembly of the available executable code. The Opposition Division agreed with the patentee and maintained the patent as granted. The opponent appealed the decision. The Appeal Board disagreed with the Opposition Division and the patentee’s arguments, and found that, whilst disassembled software or execution of the software line-by-line would obtain an “alternative” (low-level) description of the invention (compared to the disclosure in the patent), the skilled reader would still obtain a description of the method embodied by the software. The prior sale of the software was thus considered an enabled prior use, and the claims were found to lack novelty. The appeal was successful, and the patent revoked. (T 2440/12)
14. Who has the burden of proof with regards to an alleged public prior use of a product?
This case relates to an appeal by an opponent against a decision to reject an opposition. The appellant-opponent presented arguments relating to added subject matter, novelty and inventive step. An intervener (opponent 2) filed an intervention as an assumed infringer. The infringer alleged insufficiency, unallowable added subject matter and lack of inventive step. In response to the patentee’s submissions, the intervener presented further documents as evidence of alleged public prior use (by the patentee) of the invention (a test installation of a system that fell within the scope of claim 1). The Board agreed with the intervener in that employees of the utility company that installed the system would have gained knowledge of the technical nature of the equipment. The issue to be decided was that of whether the employees were bound by a confidentiality agreement. The burden of proof initially lies with the respondent (patentee) to establish the existence of a confidentiality agreement. The respondent responded in that there would at least have been an implicit agreement of confidentiality, and presented an affidavit from a project manager. In view of this, the Board determined that the burden of proof lies with the intervener to establish that there was no confidentiality agreement. The intervener could not, so the alleged public prior use could not be proved to be public in nature. None of the remaining grounds prejudiced the maintenance of the patent, and so the appeal was dismissed. (T 473/13)
Inventive step (Article 56 EPC)
15. When there are multiple pieces of prior art that may be the closest prior art, is it legitimate to start from multiple documents, and what criteria should be used to select which are the legitimate starting points?
An appeal was filed against a decision to refuse an application during examination, one of the arguments being that the Board Examining Division had applied the “problem-solution” approach incorrectly because D1 was not the closest prior art. As well as appealing the decision of the Examining Division, the appellant requested that questions relating to which documents should be chosen as the closest prior art be asked of the Technical Board of Appeal. In its findings, the Board reiterated the EPO’s position on the closest prior art, in that the closest prior art is often characterised as being the most promising springboard to the invention (T 254/86) to the extent that it is concerned with a similar use which requires the minimum amount of structural and functional modifications (T 606/89). It is not always unambiguous, in which case the problem-solution approach may need to be repeated starting from other pieces of prior art (T 710/97). If the skilled person had choices of several workable routes, each route should be assessed (T 967/97). In conclusion, the Board stated that it was permissible to start an inventive step argument with any document that appears to be a suitable starting point, and that an inventive step objection does not become invalid merely because it is based on a document which is not established to be the closest prior art. (T 1742/12)
Re-establishment of rights
16. What constitutes removal of the cause of non-compliance?
The appellant’s European representative had forwarded the notice of loss of rights based on non-payment of a renewal fee, but had only become aware in a telephone call with the client some weeks later that the renewal fee should have been paid. The appellant accordingly argued that the two-month deadline for seeking re-establishment should run from the date of the telephone call, as it was the information from that call which led to removal of the cause for non-compliance. The Board, however, disagreed and held that on receipt of the notice of loss of rights, the European representative could and should have established whether something had gone wrong and whether payment of the renewal fee had been unintentionally missed. The two-month deadline, therefore, was calculated from the date of the notice of loss of rights, which meant that the request for re-establishment was late-filed and thus not admissible. (T 629/15)
17. Is an appeal admissible if the appeal is filed late due to the date being incorrectly entered into a record system resulting from a communication from the EPO being incomplete?
The application was refused during oral proceedings, and an appeal was filed. Due to an error in the processing of the post, the applicant’s representative filed the appeal two months late. The error, according to the applicant, occurred because the EPO did not include EPO Form 2019 (relating to the text of Articles 106 and 108 EPC) with the communication informing the applicant of the decision of oral proceedings. The representative only noticed that he had missed the appeal deadline when chased by the applicant for a progress update. The representative argued that the decision had not been notified properly, so the deadline had not been triggered; the Board disagreed. The Board agreed that re-establishment of the deadline could be allowed if all due care was established with the missing deadline. The Board deemed that there was no due care in the circumstances that led to the missed deadline. Restoration was not allowed and the appeal was refused. (T 1325/15)
Remittal to the department of first instance
18. Will the Board revoke a patent because the description is not adapted to the allowed claims?
At oral proceedings, which the patentee did not attend, the Board upheld the patent on the basis of auxiliary request 3. The opponent submitted that the patentee had not provided an adapted description which conformed to the wording of auxiliary request 3 and could not do so because they had chosen to absent themselves from the oral proceedings. Accordingly, the opponent submitted that the patent was not in compliance with the legal requirements of the EPC and should be revoked. The Board disagreed, taking the view that it had the discretion to remit the case to the Opposition Division for adaptation of the description, or even to continue the proceedings in writing of its own motion. As the claims of auxiliary request 3 were found to be allowable, the Board regarded revocation of the patent as inappropriate. It therefore remitted the case to the Opposition Division with the order to maintain the patent on the basis of auxiliary request 3. (T 985/11)
19. What are the risks in requesting remittal on the basis of auxiliary requests not previously considered by the Opposition Division or the Board?
The patentee, as respondent, filed a response to the opponents’ grounds of appeal which included a main request and a number of auxiliary requests. The auxiliary requests corresponded to auxiliary requests submitted during the opposition proceedings. The patentee had filed no submissions in relation to those requests, other than noting that it had not been considered by the Opposition Division and requesting in light of this fact that the Board remit the proceedings back to the Opposition Division if the main request was not allowable. The Board held that the patentee had not filed a single argument to substantiate why these requests overcame the objections made by the opponent-appellants. Following established law (as set out for example in T 1732/10 and T 217/10), unsubstantiated claim requests are effective only at the date on which substantiation is provided. Thus, in the present case, the auxiliary claim requests had to be considered as not validly filed and thus did not form part of the appeal proceedings. Accordingly, no decision on their substance (or on remittal) needed to be taken. (T 1784/14)
20. If reasoning is missing from a decision of the Opposition Division, under what circumstances would the Board not remit the case back to the Opposition Division?
The Board found that the decision of the Opposition Division had a fundamental deficiency in that there was no (sufficiently) reasoned decision on the added matter objections made against the claims which the Opposition Division found allowable. However, the Board decided not to remit the case to the Opposition Division. In its reasoning, the Board noted that the appellant-patentee, which was seeking remittal, was not negatively affected by the decision of the Opposition Division. The Board in its earlier preliminary opinion had reached a different view from the Opposition Division, namely that the claims did contain added matter. However, the Board did not believe that the appellant-patentee had insufficient time to respond to the Board’s preliminary view, and so remittal to provide more time to respond was not necessary. Further, the Board concluded that remittal would have resulted in further procedure before the Opposition Division, which could not be expected to change the substance of the issue faced by the Board. (T 2171/14)
21. Is it a substantial procedural violation for the Opposition Division to state that it will not accept further auxiliary requests without taking notice of their content?
The appellant-patentee alleged that the Opposition Division had made several procedural violations, in particular because, after admitting two auxiliary requests during oral proceedings, the Opposition Division refused to admit a third auxiliary request or an offered fourth. The Board found that the Opposition Division had possibly exceeded its scope of discretion by categorically stating during oral proceedings that it would not accept further auxiliary requests without duly taking notice of their content. However, the Board found that, even if this is ultimately the case, it did not amount to a substantial procedural violation because, having regard to the overall procedure in the circumstances, the Opposition Division did not breach the appellant-patentee’s right to a fair hearing. The Board also found that none of the other allegations of procedural violations by the Opposition Division had merit either. (T 1717/13)
22. Does an objection under Article 24(3) EPC (objection to members of the Boards of Appeal due to partiality) mean that replacement of such a member can be applied without consideration of whether this objection is admissible?
The inventor of a patent opposed its grant based on novelty and inventive step. The Opposition Division rejected the opposition and allowed the patent in unamended form. The opponent appealed the decision, raising many objections relating to procedural violations concerning its right to be heard, and also raised further novelty and inventive step arguments as well as clarity objections, and further submitted D7 to D22. Upon learning the composition of the Boardreceiving the summons to oral proceedings, the appellant further objected that its content indicated that the rapporteur should be excluded from further procedure under Article 24(4) EPC. After further rounds of correspondence between the Board and the appellant, the Board held that Article 24(4) EPC (replacement of Board members) cannot be automatically applied without the need to decide whether the objection is admissible since Art 24(3) EPC (second and third sentences) requires a preliminary examination for admissibility of the objection. Thus, there was no procedural violation by the Board of Appeal by not replacing the objected members of the Board when taking any decision on the partiality objections raised. The Board decided against many of the appellant’s objections, and rejected the appeal. (T 355/13)
23. Can the Opposition Division be enlarged or reduced by the Division itself?
The Opposition Division was enlarged from its usual composition of three members to four because witnesses offered by the opponent were expected to be heard during the oral proceedings. The patentee indicated that it would not attend the oral proceedings. The procedure was continued in writing and the patent was revoked by the Division reduced again to three members. The Board considered the Division to have been both enlarged and reduced lawfully by the Opposition Division itself. (T 1254/11)
24. Who should make a decision in an enlarged Opposition Division?
The Opposition Division is competent to enlarge to four members and subsequently reduce again, as decided in T 1254/11 above. However, any decision needs to be made by the Opposition Division in its correct composition: a decision to reject an opposition was made and signed by three members during a four-member composition. The Board held that this decision was taken in a wrong composition of the Opposition Division and therefore not valid. (T 1088/11)
25. Is it acceptable for a representative to switch sides?
The opponent’s representative appeared at oral proceedings in the presence of a representative who had worked previously in the firm representing the patentee. The patentee’s representative considered this a substantial procedural violation which deprived them of the opportunity of a fair hearing. However, the representative was present as an accompanying person and had not requested permission to speak. As such, the Board accepted his presence and could not refer the case to the enlarged Board of Appeal. The Board is not competent to decide on conflict of interest or the epi code of conduct. (T 1693/10)
26. Did alleged excessive delays before the EPO Examining Division amount to a substantial procedural violation?
Before the Examining Division, the application was refused during oral proceedings due to a lack of inventive step. The applicant filed an appeal against the decision, and alleged there was a substantial procedural violation due to significant delays in the procedure before the Examining Division. Two separate delays were alleged: (i) delay of over 11 years before an inventive step objection based on D3 was made; and (ii) delay of over seven months in issuing the written decision of the oral proceedings. Regarding (i), the inventive step attack was made after the summons to oral proceedings had issued, but at least nine days before the proceedings occurred. Whilst the inventive step objection was raised over 3,000 days (according to the applicant) from D3 first being cited in the search report, the Board of Appeal rejected the argument that these delays were contrary to any provisions in the EPC. Likewise, regarding (ii), the Board held that there had not been any violation, since the EPC does not specify how soon after the proceedings the written decision and minutes are to be issued. The application was rejected again based on inventive step, and a further request by the applicant to refer a question (regarding refunding of a renewal fee that fell due after oral proceedings, but before receiving the written decision and minutes) to the Enlarged Board of Appeal was refused. (T 1824/15)
27. Should a case be remitted to the Opposition Division for further examination if there is a procedural violation?
During opposition, the main request and seven auxiliary requests were found to lack sufficiency due to the phrase “energy state” used to calculate various parameters. The patentee appealed the decision, arguing that there had been a procedural violation in the first to seventh auxiliary requests not being considered properly by the Opposition Division and the patentee had not been given the right to be heard. The appellant-patentee requested that, if the main request in the appeal were to be refused, the case should be sent back to the Opposition Division to consider the first to seventh auxiliary requests. The Board of Appeal noted that the same objected phrase “energy state” was present in each of the submitted requests. Despite the differing opinions between the Opposition Division and patentee regarding a point in the minutes of the opposition, the Board of Appeal decided not to remit the case because the central issue (the phrase “energy state”) was present in each of the requests, the age of the case would mean the case was already old and remitting it would cause additional delays before it was decidedin deciding the case, there is no absolute right in law to have an issue decided on by two instances, and the respondent objected to the remittal. The appeal was dismissed. (T 803/12)
28. Was there a procedural violation in light of the lengthy delays in the Examining Division’s handling of this case?
The application was filed in May 1996 and entered the European regional phase in December 1997. A supplementary search report issued in February 1999, and a first communication issued from the Examining Division in June 2004. The applicant filed a response and sent two chaser letters subsequently. Further examination reports issued, and were replied to, between 2005 and August 2007. The applicant was summoned to oral proceedings in a communication dated March 2010. The application was refused at oral proceedings before the Examining Division due to a lack of inventive step. A late-filed auxiliary request by the applicant was not admitted because it did not prima facie overcome the previously raised objection. The applicant appealed. The Board of Appeal held that there was a procedural violation by the Examining Division in taking 14 years from filing to issue a first decision to refuse the case. Furthermore, the Board considered the Examining Division’s written reasoning in the decision was inadequate and the contested decision was insufficiently reasoned, all of which amounted to a substantial procedural violation, but the delay itelf constituted “special circumstances” which meant it would be inappropriate to remit the case to the first instance for formal reasons alone. However, tThe appeal was allowed because an auxiliary request was found to have inventive step, and the case was sent back to the Examining Division for further consideration with a recommendation to process it quickly in view of the earlier delays. (T 823/11)
29. Did the Examining Division’s failure to admit an auxiliary request amount to a procedural violation?
An appeal was filed against the decision of the Examining Division to refuse an application on the grounds that there was no request on file. During examination, a partial search report was issued, as the examiner believed there to be two inventions. The applicant paid the additional search fee, after which an extended European search report covering both inventions issued. The applicant was invited to state upon which invention further prosecution was to be based. In reply, the applicant filed a main request to the second invention (based on amended claims) and an auxiliary request to the first invention (based on amended claims). In a subsequent communication, the Examining Division refused to admit the auxiliary request, as it was non-unitary, the subject matter was prima facie not new, and it stated that further prosecution would be based on the main request. The applicant responded by resubmitting the auxiliary request (invention 1) as a new main request, but in a summons to oral proceedings, the Examining Division stated that the new main request was not admissible. Whilst it was clear to the Board of Appeal that the applicant responded unclearly to the invitation to choose an invention, due to the fact that it found that the Examining Division should in response havedid not clarified to the applicant that it was necessary for the applicant to clearly indicate which invention was preferred for further prosecution, rather than refusing the admit the auxiliary request.in response to the main and auxiliary requests, which was procedurally essential for further prosecution, Tthe Board held that there had been a substantial procedural violation since the applicant had not been given a further opportunity to comment. The appeal was allowed and the case sent back to the Examining Division. (T 736/14)
30. What are the consequences of withdrawing requests when not attending oral proceedings?
The appellant withdrew a request for oral proceedings and indicated that it would not attend the oral proceedings. The appellant also withdrew previously filed claim requests and submitted three new requests, all one month before the scheduled hearing. The oral proceedings took place in the absence of the appellant and the late-filed requests were not admitted because the appellant gave up the opportunity to present its case as to why the late requests should be admitted. Given that the original requests were withdrawn, there were no requests left, so the Board rejected the appellant’s request for remittal to the Examining Division. (T 133/12)
31. Was the feature of the “one transaction” directly and unambiguously derivable from the priority application as filed?
In opposition, it was found that the patent was not entitled to priority of an Irish patent application because it was not directly and unambiguously derivable from the priority document. The patent related to payments for mobile phone top-ups, and provided a system whereby those top-up payments were presented as one transaction when bought with other items at the same time (rather than having to use two separate pay stations to pay for items and the top-up separately). The Board of Appeal found that the strict test of direct and unambiguous derivability of the “one transaction” feature” was not satisfied since there was no implication from the priority document that a top-upthe receipt disclosed in the priority application was also for other products other than mobile phone top-ups. As such, the claims were not entitled to the priority claim, and the patent lacked novelty due to admitted prior use after the priority application was filed. The appeal was dismissed. (T 1983/14)