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Case law relating to EPC with some comments on case law under EPC 2000 CONOPA Congress Copenhagen, August 2008

Case law relating to EPC with some comments on case law under EPC 2000 CONOPA Congress Copenhagen, August 2008. Daniel X. Thomas. Director, DG1. Case law relating to the EPC. The present lecture be it only due to its brevity

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Case law relating to EPC with some comments on case law under EPC 2000 CONOPA Congress Copenhagen, August 2008

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  1. Case law relating to EPCwith some comments on case law under EPC 2000CONOPA CongressCopenhagen, August 2008 Daniel X. Thomas Director, DG1

  2. Case law relating to the EPC • The present lecture • be it only due to its brevity • does not have the aim of giving an exhaustive view over all recent case law • but rather show certain developments of case law or decisions which might be of interest to practitioners

  3. Case law relating to the EPC • Classic sources of case law: • publication of decisions on the home page of the EPO • about once a month) • under http://www.epo.org/patents/appeals/new.html • EPO Board of Appeal Case Law, Special Edition of the Official Journal of the EPO, • Case Law of the Boards of Appeal, 5th edition, 2006

  4. Case law relating to the EPC • Petition for review • R 1/08 • Opposition rejected by Opposition Division • Oral Proceedings in appeal in the absence of opponent I • Subject to the OP • main request • auxiliary request = claims 1+2 as granted • Patent revoked for lack of inventive step • Petition for review by proprietor under Art 112a(2,c and 2d) • No objection as to inventive step against the auxiliary request during OP, as well as lack of reasoning with respect to the auxiliary request in the decision • Taken by surprise by the decision given • One argument, relating to an advantage arising from a feature of the claim, was not considered by the Board

  5. Case law relating to the EPC • Petition for review • R 1/08 Continuation • Petition for review considered admissible • Petition for review not clearly allowable • The petitioner acknowledges that the Board asked the representative to provide his argument with respect to the inventive step of the auxiliary request • There is thus no surprise from the side of the petitioner • The reasoning given by the BoA in respect of the auxiliary request is directly related to the arguments put forward in writing, hence is based on grounds or evidence he could comment • No provision of the EPC that a Board must provide a party with all foreseeable arguments in favour or against

  6. Case law relating to the EPC • Petition for review • R 1/08 Continuation • Petition for review not clearly allowable • The petitioner acknowledged that the decision under review is reasoned • The EBoA did not enter into a review of the merits of the decision, the BoA has decided on all valid request and not "infra petita", and gave reasons • The argument was not related to the auxiliary request, but to the main request • even if it would be valid for the auxiliary request, the effect was not considered only owing the absence of a party, but also because it had not been substantiated

  7. Case law relating to the EPC • Refund of the fee for further processing • J 12/07* • Application pending on 13.12.2007, but expiry of time limit was before, hence EPC 1973 applies • A second extension of time limit to reply to a communication was refused by the examining division, leaving the applicant to apply for further processing • The fact that the applicant was a start-up company which had only very recently appointed the representative is not an exceptional circumstance • Reasons given after the expiry of the time limit cannot be taken into account • in any case a mere general reference to financial difficulties is not sufficient • No reimbursement of the fee for further processing

  8. Case law relating to the EPC • Application for re-establishment • T 1026/06 Sp. Ed. JO 2008, p74 • Patent granted without DE • No appeal of said decision on the assumption that the designation of DE was nevertheless valid and would be corrected by the EPO • Time limit for application for re-establishment not respected • the time limit starts at the moment when the party has become aware of the lapse of an original time limit, • in the present case with publication of the patent, since mention of DE was also absent in communication under R51(4)EPC73, now R71(3) • Art 122 does not allow the correction of a proper decision not to act in a given circumstance

  9. Case law relating to the EPC • Suspension of proceedings • J 20/05 • An applicant whose application proceedings have been suspended is not entitled to file a divisional application relating to the application whose proceedings has been suspended • it is the entitlement acquired by virtue of the parent application that gives the right to file a divisional application • it would be inconsistent to suspend the parent application, but to allow the filing of a divisional • an alleged absence of overlap between the subject-matter of the parent and that of the divisional does not justify the filing of a divisional, since it is the whole content of the parent which is determinant

  10. Case law relating to the EPC • Suspension of proceedings • J 15/06 • Suspension ordered after issuance of the decision to grant had been issued and the grant of a patent would be announced at a given date • Correction of the decision to grant was published • Suspension ordered retroactively • The original applicant was of the opinion that the suspension was ineffective since it was taken after the mention of grant in the Bulletin, and hence appealed the decision to suspend • Withdrawal of request for suspension by the third party • Immediate continuation of grant procedure was therefore ordered, since withdrawal meant consent to the continuation • No reimbursement of appeal fee

  11. Case law relating to the EPC • Admissibility of opposition • T 1190/03 • An opposition filed by a partnership of patent attorneys under English law is admissible in so far as the full names of the partners is given • The opposition division did not challenge the designation of the partnership • Although for the Board the opponent was clearly identified, it nevertheless considered the lack of the full names as a deficiency under R 56EPC73, now R77 • After filing the full names, the opposition by the partnership was considered fully admissible

  12. Case law relating to the EPC • Admissibility of opposition • T 864/04 • Citing published patents ( not prior art) instead of published patent applications ( true prior art) did not render the opposition not admissible • No undue burden in discovering the publication date of a document divided out inter alia of US XXX • Further patent documents were as well cited with a reference to the pre-published international applications, including their publication date

  13. Case law relating to the EPC • Admissibility of opposition and ensuing appeal from the opponent • T 1271/06* • The Board of Appeal deemed public prior use not sufficiently documented during the opposition period • R55(c)EPC73, now R 76(2,c) • Hence sole appeal by the opponent having based its opposition on said public prior use not admissible

  14. Case law relating to the EPC • Admissibility of appeal • 1276/05* • Patent revoked since requests, different from the claims as granted, were offending Art 123(2) • Request in appeal: claims as granted • This was one of the three choices available in such a situation to the proprietor • argue that the finding was wrong • accept the finding and file further amendments to overcome • revert to claims as granted • The withdrawal of the offending requests self evidently overcomes the grounds for revocation • Appeal admissible, the more so since the proprietor never gave up this request, which was not accepted as late filed by the OD

  15. Case law relating to the EPC • Transfer of opponent status - admissibility of appeal • T 426/06** • Opposition filed by "BP Chemicals Ltd", patent maintained in amended form • Request for transfer of opposition to "Innovene Europe Ltd" filed after the decision was issued • Appeal against decision filed by "Innovene" • The mere filing of a convention between the original opponent and the now appellant is not sufficient to justify the transfer of opponent status • it is not clear from this document which part of the opponent's business assets had been actually transferred, and especially if the assets in the interest of which the opposition was filed had been transferred • Opposition not admissible

  16. Case law relating to the EPC • Admissibility of appeal • T 518/05* • The respondent only challenged the admissibility of appeal at the beginning of the oral proceeding before the Board • The Board however considered that the requirements of R 64EPC 73 were met in that the impugned decision was clearly identifiable, the decision under appeal should be cancelled in totality, and as an auxiliary request maintenance in amended form was requested • Requests filed one month before oral proceedings are not late filed in spite of going in two different directions • one being in line with the argumentation originally presented • the other being a response to a novelty objection raised by the Board in the annex to the summons

  17. Case law relating to the EPC • Admissibility of appeal • T 748/06** • R99(2) was applicable in the present instance • According to the respondent the appeal was not admissible in that there were no reasons given as to why the impugned decision should be set aside, but merely reference was made to newly introduced documents • Since the newly filed documents (D4-D6) were introduced in order to show, in combination with the, already existing, nearest prior art (D1), that the subject-matter of claim lacked inventive step, the requirements of R99(2) were fulfilled • D4 - D 6 were as well not late filed

  18. Case law relating to the EPC • Admissibility of appeal • T 613/07** • The appellant considered that the admissibility of the appeal should be decided according EPC 73 • The new R99(2) specifies as necessary content of the notice of appeal the reasons for setting aside the decision impugned and the facts and evidence used whereas old R 64(b) did not state such requirement • Be it under EPC2000, Art 12(2)RPBoA, or under EPC1973, Art 10a(2)RPBoA, stated clearly the elements necessary contained in the notice of appeal, so that the question whether EPC 1973 or EPC 2000 should apply is irrelevant • Since the main request was rejected by the opposition division as infringing Art 83 and that the notice of appeal only discussed novelty, the appeal was deemed not admissible

  19. Case law relating to the EPC • Admissibility of appeal • T 157/07** • The appeal filed by a patentee (appellant) whose name has been changed is admissible according to R64a EPC1973 even if the name change has not been notified to the EPO, insofar as there is no doubt about the identity of the appellant • Since the appeal was filed before 13.12.2007, EPC 1973 is applicable • In the mean time the change of name has been entered in the Register

  20. Case law relating to the EPC • Admissibility of appeal • 1209/05** • Appeal by the opponent whose opposition had been rejected • The admissibility of an appeal is not to be denied • because the appellant has not taken issue with the reasons upon which the decision of the Opposition Division is based • but has presented a fresh case to the Board • by submitting arguments based on new documents, i.e. 3 documents already on file + a new one, D 4 • provided the new arguments and evidence concern a ground of opposition which corresponds to one of the grounds on which the opposition has been filed • The admissibility of D4 was challenged, but accepted as highly relevant ( was already used in examination) and no abuse seen • see also T 611/90, OJ 1993, 50, and T 708/95

  21. Case law relating to the EPC • Admissibility of appeal • 332/06* • Appeal by the proprietor against maintenance in amended form according to an auxiliary request with two sets of claims, • one for BE, FR, IT, the other for DE • claims for DE identical with claims for a non allowable main request • Requests in appeal: • maintenance for BE, FR, IT as allowed by the first instance • maintenance for DE with wording as annexed to appeal • By doing so the proprietor has thus given up an appeal against the part of the decision relating to BE, FR, IT, and hence only the DE part was challenged • Appeal not admissible since the claims for DE corresponded to the main request had been deemed allowable

  22. Case law relating to the EPC • Admissibility of appeal • 332/06* Continuation • When filing the appeal, it was admissible • When filing the grounds of appeal, it became not admissible, since the claims for DE were considered allowable • hence the proprietor was not adversely affected by the decision • Admissibility of an appeal may not only be present when it is filed, but it should subsist during the whole procedure!

  23. Case law relating to the EPC • Appeal not filed • T 1152/05** • Notice of appeal filed in Dutch by the then proprietor, Solvay Engineered Polymers, residing in the USA • a French translation being filed the same day • Since residing in the USA, it cannot benefit from the provisions of Art 14(4) • The fact that a translation in an official language had been filed the same day could not be considered as filing of the appeal in an official language • According to G6/91( JO 1992, 491), the EPO cannot take the translation as the official notice of appeal and ignore the original • Hence the appeal was not deemed filed • A correction under R88 EPC1973 in order to delete the word translation is not possible since it was the true intention to file a translation

  24. Case law relating to the EPC • No new grounds of opposition at appeal stage • T 913/05 • By • deleting all claims as granted of one category (device), • restricting the defence of the patent to the subject-matter of a combination of claims (7+14 as granted) of an other category (method) and • relying on an alleged combinatory of features of the thereby formed independent claim • a fresh case was created which justifies examination as to whether the amended patent meets the requirements of the EPC, especially Art 123(2)

  25. Case law relating to the EPC • No new grounds of opposition at appeal stage • T 913/05 Continuation • The amendments carried out justified, in the Board's opinion, a full examination in accordance with G 9/91 ( dependent claims falling with the independent claim • Furthermore the Board had, according to Art 11(3)RPBoA, warned the parties in the annex to the summons • Opponent 2 had also brought Art 123(2) as a ground for opposition • Since claim 1 of the main request had no counterpart in the application as filed, the patent was revoked

  26. Case law relating to the EPC • Amendments during opposition • T 1118/05 • Introduction at opposition stage of a request comprising 4 independent claims • one is a combination of claims 1+3 as granted • three are a combination of granted claim 1 with a respective different feature from the description • The Board had strong doubts about the admissibility of those requests since the opposition procedure is not a continuation of the examination procedure • Since none of the request filed were allowable, either due to lack of inventive step or added subject-matter, • there was no need to address the procedural issue of admissibility of the requests

  27. Case law relating to the EPC • Amendments during opposition • T 906/05 • Granted claims = two independent claims directed to two articles ( bi-layer or three-layer) generically drafted • No reference to a vent channel or its position in those claims • No independent claim related to any specific embodiment • Further independent claims filed after opposition • one still generically drafted but to a different arrangement • the second neither found in any claim as granted nor in claims as originally filed, was neither subject of examination nor open to opposition • The filing of those two claims is considered as an attempt to improve the original disclosure and not necessitated by a ground of opposition

  28. Case law relating to the EPC • Amendments during opposition - Extension of protection • T 671/04 • Parts deleted from the description during grant procedure remain in order for Art 123(2) purposes in order to define the original content of the disclosure • even if they might not be reinstated under Art 123(3) • T 684/02 • Reinstatement of an originally disclosed limit of 11,5% by weight of a specific compound, rather than 5% as granted • constitutes an offence against Art 123(3) although not against Art 123(2)

  29. Case law relating to the EPC • Amendments during opposition - Extension of protection • T 175/02 • In claim as granted "able to be pressurised" • i.e. pressure not > atmospheric pressure • In claim as amended "pressurised" • i.e. pressure > atmospheric pressure • Hence extension of protection

  30. Case law relating to the EPC • Obviously irrelevant matter • T 1046/05* R 34(1,c) EPC 73, now R 48(1,c) • The appellant considered that the drawings were obviously irrelevant and should be deleted as well as the corresponding parts of the description since they were neither related to the independent nor to the dependent claims • The Board disagreed and considered that at least for the dependent claims the drawings were necessary in order to comply with Art 83 • A corresponding request to put a question to the Enlarged Board of Appeal was rejected

  31. Case law relating to the EPC • Late filed request not admissible • T 1810/06* Art 13(1)RPBoA (OJ 2007, 537 ff) • Some of the requests filed in response to a communication of the board annexed to summons to Oral proceedings not admissible • they should have been filed at the latest with the grounds of appeal • introduction of a formula not present in any claims as granted, but only in the description ( was it at all searched?) • abuse of procedure • Some requests admissible by virtue of being in response to objections first raised by the board in said annex

  32. Case law relating to the EPC • Late filed requests not admissible • T 869/03* • Ex parte procedure • 12 new requests filed by fax two days before the OP • Late filing allegedly due to the disappearance of the whole patent department of the client and difficulty in contacting newly appointed persons • Reasons not accepted by the Board, since they could have been filed in response to the annex to the summons • No referral to first instance in order to perform a further search • according to applicant, if no better document would be revealed, this would be a proof of inventive step!!! • Refusal by the Board due to lack of inventive step based the prior art described in the introductory part of the description

  33. Case law relating to the EPC • Late filed request not admissible • T 1511/05 • Reformatio in peius did not allow to introduce at a late stage • actually during oral proceedings, after all previous request were deemed not allowable • of a request which was broader than that maintained in first instance

  34. Case law relating to the EPC • Clarity of requests • T 464/06** • The main request of the appellant was to maintain the patent as granted • However in two submissions by the patentee, the text submitted as main request (elongation viscosity) differed from the claim as granted (elongational viscosity) • Since the appellant failed to clarify its requests even after discussion during Oral Proceedings, the main request was rejected under Art 113(2), due to lack of agreed text • The submission by the patentee that the noted discrepancy was of no technical consequence did not assist in resolving the issue

  35. Case law relating to the EPC • Indiscriminate filing of requests • T 148/06* • Filing of a plurality of requests without stating what should be considered as main and what should be considered as auxiliary requests is not admissible • Such a filing is not appropriate in view of the possible outcome of the opposition procedure for the patentee • either rejection of the opposition or • maintenance in amended form • A procedural possibility for the patentee should not become an issue of substance • It is up to the patentee to decide on the ranking, any other way of doing amounts to an abuse of procedure

  36. Case law relating to the EPC • Late filed document during opposition • T 113/04 • The English abstract of a Japanese patent application, itself not drafted in an official language, was not considered as prima facie more relevant than the prior art already in the file

  37. Case law relating to the EPC • Hearing of witness • T 190/05* • A public prior use cannot be considered as such as a ground of opposition under Art 100(a)EPC 1973 • It is merely a fact which is put forward in order to evidence a ground of opposition • The public prior use was sufficiently documented in that the questions as to when, what and under which circumstances were fully answered when the opposition was filed • The fact that a witnesses was not heard, but that the opposition division relied on a declaration under oath is not in accordance with case law • The witness should have been heard since the value of a hearing of a witness is higher than the value of a declaration under oath

  38. Case law relating to the EPC • Value of testimony/Onus of proof • T 1210/05* • Prior disclosure of a poster at a conference • The Opposition division considered the poster as having been disclosed at a given conference • The opponent contented that the onus of proof had changed • Board disagreed since it would mean that the patentee would have to prove a negative, and that there was no shift in the burden of proof

  39. Case law relating to the EPC • Value of testimony/Onus of proof • T 1210/05* Continuation • The finding of opposition rests exclusively on the testimony of one witness for which no independent evidence is available • Accepting as true the matter which has to be proven by the testimony whose credibility is to be evaluated is not correct • A person can be mistaken in his recollection of an event having occurred several years ago, in the present case over 7 years ago • That the testimony must be true as there is no evidence that the witness is lying is not correct

  40. Case law relating to the EPC • Accompanying persons - G 4/95 • T 365/05 • The presence of the technical expert of the respondent was announced well in advance with the criteria set out in G 4/95 and was thus allowed to speak about the issue of Art 83, according to his affidavit on file • The appellant's UK patent attorney was as well allowed to speak, as its presence was as well announced well in advance, whereby it was implicit that he was assisting the authorised representative and speaking under the latter's supervision

  41. Case law relating to the EPC • Accompanying persons - G 4/95 • T 89/04 • The request to allow an accompanying person to speak during Oral Proceedings was only made 3 days before the set date • this is not sufficiently in advance • The accompanying person did not belong to a party to the proceedings • The summons issued about two months before the set date for Oral Proceedings, public holiday in the US were the accompanying person resides and the need for interpretation were not considered as exceptional circumstances justifying the late filing of the request

  42. Case law relating to the EPC • Accompanying persons - G 4/95 • T 1207/06 • The request to allow an accompanying person to speak during Oral Proceedings was made one month before the set date • this is sufficiently in advance • The submissions of the accompanying person were made under supervision and control of the professional representative and were largely restricted to explaining the interpretation of the technical terms of the claims and the corresponding features of the prior art • The criteria in decision G4/95 were thus met

  43. Case law relating to the EPC • Decision in absence of a party • T 917/06 • The appellant withdrew its request for oral proceedings and suggested "to bring about a decision in writing" • This was considered as an auxiliary request to continue in writing if the Board finds the available requests not allowable • According to Art 15(3)RPBoA, the appellant was considered as relying on its written case • According to established case law ( T1704/06 and T 602/03) the appellant which files claims shortly before OP and does not attend must expect a decision on objections which might arise against such claims in his absence • The newly filed claim was therefore deemed lacking inventive step for reasons already given in the annex to the summons

  44. Case law relating to the EPC • Decision in absence of a party • T 574/06** • In response to a communication of the Board accompanying the summons to OP, the applicant-appellant filed new claims and informed the Board that it would not attend the OP • In the communication accompanying the summons, the appellant was informed that should amended claims be filed in response those would have to be examined for compliance with the EPC, and especially Art 123(2) • In deciding not to attend OP, the appellant chose not to make use of the possibility to make further submissions in support to any objection raised by the Board • Since the new independent claim was considered as an intermediate generalisation not disclosed in the originally filed application, the latter was refused under Art 123(2) • Confirmation of T1264/06

  45. Case law relating to the EPC • Statement not to attend Oral Proceedings • T 1482/05** • A statement not to attend Oral Proceedings and to ask for a decision on record amounts to a withdrawal of the request for Oral Proceedings, see also T 3/90, OJ 1992, 737 • T 910/02 • Request for OP as subsidiary request • subsequent declaration of non appearance at OP = OP cancelled • T 696/02 • Non appearance at OP is equivalent to withdrawal of subsidiary request for OP

  46. Case law relating to the EPC • Postponement of Oral Proceedings • T 49/06** • The applicant requested postponement of the Oral Proceedings for the reasons • that the Board introduced in the annex to summons objections which were not raised by the first instance • a two and a half month period to answer those objections and to draft a new set of claims was to short and was considered as "serious and substantive reason" according to the notice of the Vice-Presidents dated 01.09.2000, OJ 2000, 456 • Postponement of the Oral Proceeding was refused since according to Art 15(1)RPBoA a communication was sent as an annex to the summons and the summons were in accordance with R132(2)

  47. Case law relating to the EPC • Postponement of Oral Proceedings • T 1102/03* • Opposition with 11 parties • Appeal by the patentee since patent was revoked • The representative of the patentee requested postponement of the Oral proceedings in view of a booked holiday • He also stated that he was alone able to defend the case and that by setting a time limit of 2 and 1/2 months was not enough for a careful preparation • However controversial case for more than 10 years

  48. Case law relating to the EPC • Postponement of Oral Proceedings • T 1102/03* Continuation • The effort of postponing fixed Oral Proceedings until a date might be found which would suit numerous parties, the member of an extended Board, and the facility management of the EPO, outweighs the effort of postponing or interrupting one representative's holiday booked to a destination within Europe • A strict standard has to be applied under these circumstances because a liberal approach might give rise to a series of postponements • Another pair of dates had been proposed, but under the condition that all other parties agreed

  49. Case law relating to the EPC • Postponement of Oral Proceedings • T 1053/06** • Appeal after refusal of the application, auxiliary request for OP • In reply to the summons, the applicant announced that he • would neither pay the renewal fee under R51(2) nor • attend the oral proceedings • He further requested • that the OP should be rescheduled to a date after the expiration of the six months surcharge period after which the application would be deemed to be withdrawn • that the letter of response not be included in the public part of the file • Request for postponement not in the interest of the public and of justice and hence refused • Documents excluded from public part in list according Rule 144, request rejected since information of public necessary

  50. Case law relating to the EPC • Right to be heard • T 1386/05* • Application refused and ensuing appeal • Claim 1 in appeal identical to claim 1 on which the decision was based • The appellant had thus the opportunity to present his comments which were found not persuasive by the Board • Board agrees with examining division • Immediate decision of the Board without any further communication

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