Farewell, and a final review of EPO Board of Appeal Decisions

An advantage of being a Kat is the
ability to wave and wash ears
This Guest Kat is coming to the end of his time as a member of the IPKat blogging team.  He would like to thank the other Kats, especially but not limited to the indefatigable blogmeister Jeremy, for their feline friendship and support over the last few months.  He particularly thanks Jeremy for teaching him the use of the Google Blogger software and related mysteries.  He has really enjoyed sharing some thoughts over these months with the dear readers of this weblog (and even a few not so dear ones).  He will continue to post thoughts on his professional blog, EIP Elements, albeit significantly less frequently, and will definitely submit pieces to the IPKat from time to time as well, when something really excites him, or when a Katcall is sent out.

Back in March, this Kat wrote a piece covering the EPO Board of Appeal decisions posted online in January and February 2012 that had caught his eye.  Some readers were kind enough to welcome this and ask for such pieces to continue. So, as his farewell, here is coverage of the decisions posted from March to June.  The only criteria for inclusion is interest to this particular moggy.  They are in approximate reverse chronological order of online posting.  There are rather a lot, but then again the Boards of Appeal have been very busy this year.

T 0197/08

A patent in the name of Alcon Laboratories concerning fluprostenol isopropyl ester for topical application for the treatment of glaucoma and ocular hypertension was opposed and revoked.  The claim as granted specified that fluprostenol isopropyl ester was the “sole active ingredient”, and this was held by the  Opposition Division to constitute added matter.  The Board of Appeal disagreed with the Opposition Division and found that, although “sole active ingredient” was not mentioned expressis verbis in the application as filed, monotherapy was the preferred method of administration disclosed in the application.  Therefore there was no added matter.  The case was remitted to the first instance.

T 0134/10

A patent in the name of Colgate-Palmolive Company relating to pearlised cleansing compositions was opposed by The Procter & Gamble Company and Sasol Germany GmbH.  In all the requests before the Board of Appeal, the open language “comprising” of claim 1 as granted had been changed to “consisting of”.  Integer (g) of claim 1 both as granted and in all the requests read “optionally, one or more members selected from the group consisting of an effective amount of a pH modifying agent; an effective amount of a viscosity modifying agent; an effective amount of a preservative; fragrance; and a coloring agent”.  The Board of Appeal held that the change in claim wording meant that integer (g) became important for defining the limits of the claimed composition.  This resulted from the amendment made, and therefore the clarity of the integer was examinable by the Board of Appeal even though clarity is not a ground of opposition.  The integer was found to be unclear and the patent was revoked.

A patent in the name of Nippon Steel Corporation was opposed by Tata Steel.  Claim 1 was one of those lovely claims that seem to exist only in the metallurgical arts (and this Kat adores the “balance of unavoidable impurities” that often appears in such claims):

Use of a steel in laser welding, in which the laser welding is done to a section of the steel plate cut by laser cutting, plasma cutting or gas cutting without removing scales, the steel containing, by weight %, 

0.01 to 0.20% of C, 

0.01 to 1.5% of Si, 

0.2 to 2.0% of Mn, 

0.02% or less of P, 

0.02% or less of S and 

0.031 to 1.0% of Al; and 

optionally further containing, by weight %, one or more of 

0.001 to 0.1% of Ti, 

0.001 to 0.1% of Zr, 

0.0001 to 0.02% of Mg, 

0.0001 to 0.02% of Ca and 

0.001 to 0.3% of REM; and 

further optionally containing, by weight %, one or more of 0.001 to 0.1% of Nb, 0.001 to 1.0% of V, 0.001 to 2.0% of Mo, 0.01 to 3.0% of Cu, 0.01 to 7.0% of Ni, 0.01 to 5.0% of Cr and 0.0001 to 0.01% of B the balance consisting of Fe and unavoidable impurities; and the value of Y defined by the following equation (1) satisfying 0.4 < Y < 1.5, 

Y = 0.88[%Al] + 1.14[%Si) + 0.67[%Ti] + 0.35[%Zr] + 0.66[%Mg] + 0.40[%Ca] + 0.30[REM] ... (1).

During examination proceedings, the lower limit for the Al range of the steel composition featuring in granted claim 1 had been amended from 0.0005% into 0.031%. It was undisputed that the amendment was based on the individual Al-content of the steel composition of example F given in Table 1 of the original application.  This was held to be an unallowable generalisation from a specific example, and the patent was revoked.

In this case the applicant, after Oral Proceedings and the issuance of the Rule 71(3) communication, requested that a new, broader, request be admitted.  The Examining Division refused to admit the request and refused the application because there was no agreed text for grant.  The applicant appealed and again requested grant of the patent on the basis of the broader request.  The BoA doubted the admissibility of the appeal because “the statement of the grounds for appeal does not challenge the reasons for refusing the application given in the decision under appeal”, but in any case rejected the appeal as unallowable because the Examining Division had correctly exercised its discretion under Rule 137(3) EPC in refusing to admit the broader request.

In this astonishing case the Examining Division refused an application relying on a post-published document which did not in fact form part of the state of the art under Article 54(2) EPC.  The Board of Appeal set aside the decision and remitted the application to the first instance.  However, it was considered that “incorrect assessment of a document with regard to its date of availability to the public relates to a factual error in respect of the substantive requirements”, and that “Such an error does not constitute a substantial procedural violation”. Therefore, there was no reason justifying reimbursement of the appeal fee.

In this case, by contrast with the case above, a substantial procedural violation was found and the appeal fee reimbursed.  The Examining Division did not admit certain requests because they were considered not to comply with Rule 137(4) EPC as then in force (Amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept.)  The Board of Appeal considered that the requests should have been admitted and then examined for compliance with Rule 137(4).  Furthermore, the decision did not explain why the requests were not unitary.  This was considered to represent a substantial procedural violation.

This decision derived from G2/10 a test for added matter, further to the one set out in G1/03.  The decision stated:  “The further test to be applied is whether the skilled person would, using common knowledge, regard the remaining claimed subject-matter as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed (see point 4.5.4 on page 39 of decision G 2/10).”  Using this test, amendments to the claims to add the terms “non-human” (i.e. non human animal) and “wherein the cell is not produced using a process which involves modifying the germ line genetic identity of human beings or which involves use of a human embryo for industrial or commercial purposes” (in relation to a cell claim) were held not to constitute added matter.

This is another example of a case, of which there have been many, where a decision “according to the state of the file” issued using the routine EPO Form 2061 was considered by the Board of Appeal to be not reasoned, thus representing a substantial procedural violation making it equitable to reimburse the appeal fee.

This concerned a situation where the applicant tried to pay the extension fees late.  After coming into force of the EPC 200, the old "grace period system" according to Rule 85a(2) EPC 1973 had been replaced by the remedy of further processing under Article 121 EPC.  However, the Receiving Section considered that  “Article 121 EPC was only applicable in cases where both designation fees and extension fees had not been paid in due time and a loss of rights communication under Rule 112 EPC was issued. In other cases, in particular where the designation fees had been paid in time or where an applicant waived the right to receive a communication according to Rule 112 EPC, no possibility to pay extension fees was available any more.”  The Board of Appeal upheld this reasoning, and stated that “Article 121 EPC and Rule 112 EPC are not applicable to cases where (only) the due designation of extension states and the payment of extension fees was omitted”, and, furthermore, that “the Legal Board of Appeal is not competent to decide a case that is solely governed by a "foreign" legal system [the extension agreements].”  For this latter reason, the appeal was not even considered admissible.

This case shows again that special care needs to be taken with extension states and fees, because fewer remedies are available if these are missed.

This case involves a second referral of questions to the Enlarged Board of Appeal, and was already blogged by the IPKat here.

T 0107/08

A patent of Bristol-Myers Squibb Company opposed by Bayer Health Care, directed towards a composition containing a statin and aspirin in the form of a bilayer tablet or capsule containing separate statin and aspirin granules, was revoked on the grounds that it was not substantiated that there was an incompatibility between the drugs such that the claimed formulations provided improved stability.

T 0445/08

This case, concerning possibility of correction where appeal was filed in the wrong name, resulted in a referral to the Enlarged Board of Appeal noted by the IPKat here.

T 1911/08

In this case involving a claim to a genus of compounds with pharmaceutical activity, a disclaimer was not permitted to exclude prior art that related to pharmaceuticals of a completely different type from the field of the claimed invention.  The prior art was not considered to be an accidental anticipation. It was stated “The board therefore agrees with the conclusion reached in T 134/01 (see Reasons point 2.3), namely, that a further document belonging to the field of pharmaceuticals is not to be considered as being an accidental anticipation within the meaning of the decision G 1/03, that is, even if it does not relate to the same illness or biological pathway as the patent or application in suit.”

T 0980/08

This is a short decision describing how claims that are amended too much on appeal may not be admitted.  In this case, the Board did not admit the claims of the request filed with the Grounds of Appeal, pursuant to Article 12(4) RPBA (the board can hold inadmissible facts, evidence or requests which could have been presented in the first instance proceedings), because “the amendments did not cause the procedure to converge, but instead created a new case on appeal.”

T 1188/08

This is a case where the Appellant appears to have simply re-presented as the grounds of appeal arguments already presented to the Examining Division, and filed no new claims.  Because the reasons in the decision of refusal were not addressed, the Board considered that the grounds of appeal were not sufficiently reasoned and ruled the appeal inadmissible.

J 0027/10

In this case, an application was filed that referred to Figures 13 and 14, but such Figures were not filed.  Instead of filing missing parts (i.e. the apparently lacking Figures), the applicant filed a new description corresponding to the description of the priority application.  The Receiving Section did not consider these “missing parts”, and the Board of Appeal agreed.  However, the Board decided that the Receiving Section (or, if the matter proved too technical, the Examining Division) should “specify exactly what references to drawings 13 and 14 in the description and/or claims filed on 13 August 2009 should be deleted pursuant to Rule 56(4)(a) EPC.”

T 1639/07

This decision contains interesting comments (at 2.5-2.7) on whether a problem can be taken as implementing an aim if no technical effect is apparent from the specification, stating “An effect cannot be validly used in the formulation of the technical problem if the effect requires additional information not at the disposal of the skilled person even after taking into account the content of the application in question.”

T 2434/09

The Board of Appeal continued with the examination of this appeal, even though the underlying patent application had lapsed for non-payment of renewal fees, because a substantial procedural violation had been alleged, and a refund of the appeal fee requested.  The decision says:
If a European patent application is finally deemed to be withdrawn after an admissible appeal against a decision refusing it has been filed, the appeal can usually be considered disposed of, because there is no possibility of a European patent being granted for the application. (See points 4 and 5).
However, where, as in the present case, the sole aim of the appeal is to obtain a finding by the board of appeal that a substantial procedural violation occurred in the first-instance proceedings, such that the appealed decision is to be set aside and the appeal fee reimbursed, the appeal cannot be dealt with in this way. In these circumstances the appellant has a legitimate interest in receiving a decision on the merits of the appeal. Therefore the appeal must be examined and the appeal proceedings cannot be closed without a substantive decision on the case. (See points 6 to 9).
However, the Board considered that no substantial procedural violation had occurred.   The alleged violation consisted of the Examining Division introducing a new document (D5) in first instance Oral Proceedings, and, while offering the representative time to study it, refusing to adjourn and continue in writing.  The Board stated:    “The applicant does not have a right in principle to continuation in writing if the department of first instance introduces a new document for the first time in oral proceedings and thereby changes the subject of the proceedings.”  Furthermore, the Board did not permit the applicant to change its case to allege that D5 had been referred to in relation to novelty rather than, as the Board supposed, to substantiate common general knowledge.  New submissions in this regard at Oral Proceedings were not accepted.

T 1877/07

In this interesting case, the Board of Appeal held that the common general knowledged alleged by the Examining Division had not been substantiated.  The conclusion was:
The board remits the case to the first instance for further prosecution so that the examining division will have the possibility to procure evidence that the alleged system including feature (ii) was common general knowledge. If such evidence turns out to be available, the examining division will have the opportunity to back up its arguments, clarify and modify those arguments to take account of the actual features disclosed by that evidence, and further consider the newly claimed feature (iii). On the other hand, if no such evidence is found, it appears that the examining division will have to acknowledge that the claimed subject-matter involves an inventive step.
The case was thus remitted to the department of first instance for further prosecution.

The Catchword says it all: 
An application which has been deemed to be withdrawn for non-payment of a renewal fee is not pending within the meaning of Rule 25(1) EPC 1973 in the period for filing a request for re-establishment of rights under Article 122 EPC 1973 in respect of such non-payment or in the period after which such an application is filed in the event of such request being refused.

These are the test cases concerning whether emails are “public”, reported by the IPKat here.

This was another case where a “Decision according to the state of the file” using the standard EPO Form 2061 was considered by the Board of Appeal to be not reasoned, thus representing a substantial procedural violation making it equitable to reimburse the appeal fee.  In this case, the result of using the form decision was the examining division did not address in the decision the applicant’s arguments submitted in response to the objections raised in the communications referred to in the form decision.

This decision is an example of how messy things get when there is an entitlement dispute between parties outside the EPC contracting states (in this case, Korea).

This is an unfortunate case where a number in the patent specification was illegible.  The applicant took the ingenious step of conducting a survey to support the number that was correct, but the Board of Appeal did not accept this as a means of proof.  The Board considered that the survey did not establish the correct meaning beyond reasonable doubt (the standard required – not “balance of probability”) and stated “In any event, a question of accuracy and disclosure cannot be decided by a poll.”

In this case, prior publication in a diploma thesis and oral presentation of that thesis at the Fachhochschule für Technik in Mannheim was alleged, but it was not established that the disclosure was in fact made available to the public, so novelty was accepted.

In an example of giving with one hand and taking with another, the Board of Appeal accepted the novelty of a claim to a spray gun, because the feature that “the front end of the paint nozzle tip projects 0.3 to 0.8 mm from the front end of the central opening in the air cap” could not be clearly and unambiguously derived from a drawing in the prior art showing a similar projecting nozzle tip, because, even if the drawing was to scale, no dimensions were given.  But the Board then said that the same drawing rendered the claim obvious because “measurements can be taken from drawings if true to scale, to reduce a teaching to practice”.

So long, and thanks for all the fish.
Here an appeal was not held to have been filed at all.  The only acts completed in the time limit were the payment of the appeal fee and the submission of debit order recording payment of an appeal fee, and including the application number and the name and address of the representative of the Appellant.  The Board did not accept the argument that the debit order could be regarded as a notice of appeal.

So, my thanks again to the IPKat readers, all the the IPKat team, and to Jeremy, for all the fun I have had over the last few months.  I have really valued the opportunity to consider and share a multitude of legal issues and developments, both inside and outside my usual areas of interest.  I am most grateful to you all.
Farewell, and a final review of EPO Board of Appeal Decisions Farewell, and a final review of EPO Board of Appeal Decisions Reviewed by Darren Smyth on Saturday, June 30, 2012 Rating: 5

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