CASE LAW
PART II
BOARD OF APPEAL AND ENLARGED BOARD OF APPEAL CASE LAW 2009
I. PATENTABILITY
A. Patentable inventions
1. Non-inventions under Article 52(2) and (3) EPC
1.1 Computer-implemented inventions
In G 3/08 (OJ EPO 2011, ***) the President of the EPO, making use of her power under Article 112(1)(b) EPC, made a referral to the Enlarged Board of Appeal on several points of law relating to the application of the exclusion of computer programs as such, and the limits of patentability in the field of computing.
The referral was found inadmissible under Article 112(1)(b) EPC. The Enlarged Board of Appeal noted that there was indeed a difference between the positions taken in T 1173/97 (OJ EPO 1999, 609) and T 424/03 dated 23 February 2006 concerning whether a claim to a program on a computer-readable medium necessarily could avoid exclusion from patentability under Article 52(2) EPC. It was still however necessary to decide whether this difference constituted a divergence in the case law. The President of the EPO had considered that decision T 424/03 placed emphasis on the manner in which the computer program was claimed, whereas T 1173/97 (OJ EPO 1999, 609) had placed the emphasis on the function of the computer program rather than the manner in which it was claimed (e.g. as a computer program, a computer program product or a computer-implemented method).
The Enlarged Board of Appeal observed that the position of the case law was that a claim in the area of computer programs could avoid exclusion under Article 52(2)(c) and (3) EPC merely by explicitly mentioning the use of a computer or a computer-readable storage medium. However, it was also quite clear from the case law of the boards of appeal since T 1173/97 that if a claim to program X falls under the exclusion of Articles 52(2) and (3) EPC, a claim which specifies no more than "Program X on a computer-readable storage medium," or "A method of operating a computer according to program X," would always still fail to be patentable for lack of an inventive step under Articles 52(1) and 56 EPC. Merely the EPC article applied was different. This approach had been consistently developed by the boards of appeal since T 1173/97.
The Enlarged Board of Appeal noted that it appeared that the case law, as summarised in T 154/04, had created a practicable system for delimiting the innovations for which a patent may be granted. Since no divergences from the development of that approach had been identified in the referral, it came to the conclusion that the referral was inadmissible. It could not identify any other inconsistencies between the grounds of the decisions which the referral by the President said were divergent.
B. Exceptions to patentability
1. Breaches of "ordre public" or morality
The Enlarged Board of Appeal stated in G 2/06 (OJ EPO 2009, 306) that Rule 28(c) EPC forbids the patenting of claims relating to products which - as described in the application - at the filing date could be prepared exclusively by a method which necessarily involved the destruction of the human embryos from which the said products are derived, even if the said method is not part of the claims. In this context it is not of relevance that after the filing date the same products could be obtained without having to recur to a method necessarily involving the destruction of human embryos.
According to T 522/04, it followed from G 2/06 (OJ EPO 2009, 306) that methods involving the destruction of human embryos are also to be regarded as non-patentable. In the case at issue, the contested claim was directed to a method of proliferating in vitro a clonal population of neural crest stem cells of mammalian origin. This clearly included cells of human origin. The argument of the appellant (applicant) that the cells referred to in the claimed method could be obtained not only from embryos but also from the adult peripheral and central nervous system was not supported by the application as filed. Since the only teaching of how to prepare human neural crest stem cell cultures was the use (involving their destruction) of human embryos, the board concluded that at the filing date human neural crest stem cells could be prepared exclusively by a method which necessarily involved the destruction of human embryos - with the inescapable result that the invention fell under the prohibition of Article 53(a) EPC combined with Rule 28(c) EPC. Moreover, the two features/limitations introduced by the first auxiliary request (cells "not derived from an embryo") and the second auxiliary request (cells capable of being "derived from adult tissue") could not be seen as a disclaimer introduced in order to avoid a non-patentability issue as they were not limited to human. They were features which intended to provide a technical teaching and had no support in the application as filed, wherein no technical disclosure other than isolation from embryos was found. Therefore, neither of the auxiliary requests complied with Article 123(2) EPC.
2. Surgical methods
In G 1/07 (OJ EPO 2011, ***) the examining division had decided that the claimed methods constituted diagnostic methods practised on the human or animal body and thus were excluded from patent protection pursuant to Article 52(4) EPC 1973. Furthermore, the claimed methods comprised the step of administering polarized 129Xe as an imaging agent to a subject, either by inhalation or by injection. Insofar as the delivery of the imaging agent was done by injection, the claimed methods were held to be excluded from patent protection pursuant to Article 52(4) EPC 1973 as involving a surgical step. The question whether the claimed imaging method was excluded from patentability as a treatment by surgery was referred to the Enlarged Board of Appeal.
The Enlarged Board of Appeal found the construction of interventions of a surgical nature corresponding to the practice of the EPO (e.g. T 182/90 and T 35/99) overly broad when considering today's technical reality. This construction provides that all methods involving irreversible damage to or destruction of living cells or tissues of the living body were regarded as non-insignificant interventions and thus as surgical treatments, irrespective of the underlying mechanism of the intervention. It could not give a definition which would delimit the exact boundaries of a new concept of treatment by surgery. The field of methods which potentially involves surgical steps is vast, so that each category of class will have to be assessed on its own merits. However, a narrower understanding of "treatment by surgery" was required. It should cover the kind of interventions which represent the core of the medical profession's activities, ruling out uncritical methods involving only a minor invention and no substantial health risks.
The required medical expertise and the health risk involved may not be the only criteria which may be used to determine that a claimed method actually is a "treatment by surgery" within the meaning of Article 53(c) EPC. Nor could whether or not a method is excluded from patentability under Article 53(c) EPC depend on the person carrying it out.
A method claim falls under the prohibition on patenting methods for treatment by therapy or surgery now under Article 53(c) EPC if it comprises or encompasses at least one feature defining a physical activity or action that constitutes a method step for treatment of a human or animal body by surgery or therapy.
A limitation of the term "treatment by surgery" to curative surgery was not justified (overruling T 383/03). Such a limitation would be contrary to the ordinary understanding of the word "surgery" as referring to the nature of the treatment rather than its purpose, and contrary to the fact that Article 53(c) EPC defines three separate alternative exclusions, thereby suggesting that these are not merely identical in scope.
With regard to the facts of the case the Enlarged Board decided that the claimed imaging method, in which, when carried out, maintaining the life and health of the subject is important and which comprises or encompasses an invasive step representing a substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a substantial health risk even when carried out with the required professional care and expertise, is excluded from patentability as a method for treatment of the human or animal body by surgery pursuant to Article 53(c) EPC.
The established case law of the boards of appeal, according to which a claim encompassing an embodiment which is excluded from patentability under Article 53(c) EPC cannot be left unamended, was confirmed. Exclusion from patentability under Article 53(c) EPC can be avoided by disclaiming an embodiment; the claim including the disclaimer must fulfil all the requirements of the EPC and, where applicable, the requirements for a disclaimer to be allowable as defined in decisions G 1/03 and G 2/03 (OJ EPO 2004, 413, 448).
Cases in which the invention would be fully defined without requiring the presence of the potentially surgical step as a positive feature of the claim would be cases in which the invention only concerns the operating of a device. A method which is only concerned with the operating of a device without any functional link between the claimed method and the effects produced by the device on the body does not qualify at all as a method for treatment within the meaning of Article 53(c) EPC (T 245/87, OJ EPO 1989, 171; T 789/96, OJ EPO 2002, 364). If, on the contrary, there is such a functional link the method is excluded from patentability (T 82/93, OJ EPO 1996, 274).
C. Novelty
An invention can be patented only if it is new. An invention is considered to be new if it does not form part of the state of the art. The purpose of Article 54(1) EPC is to prevent the state of the art being patented again.
1. PCT applications as state of the art
In T 1010/07, citation E4 was a publication under Article 158(3) EPC 1973, i.e. a translation into an EPO official language (English) of an international application supplied to the EPO under Article 158(2) EPC 1973. The respondent claimed that without more evidence the content of the two documents could not be considered undoubtedly identical; therefore, document E4 should not be taken into account as prior art.
The board pointed out that although the EPO did not check translations under Article 158(2) EPC 1973, it was assumed – as indicated when publishing them in the European Patent Bulletin under Article 158(3) EPC 1973 – that their content was the same as that of the published international application concerned (see e.g. T 605/93). That assumption was also the basis for the effect stipulated in the second sentence of Article 158(1) EPC 1973. In its submissions, the appellant could rely on that assumption being generally valid; it bore no further burden of proof. Only if there were grounds for doubt in a particular case did this issue need to be addressed, if necessary by submitting evidence. Here, however, the respondent had offered no such grounds; without any substantiation, it had merely said it did not know that the translation was correct. So the board had no reason to doubt that the content of E4 and the WO publication was identical.
2. Availability to the public
2.1 General issues
In T 355/07 the board held that German utility models were considered publicly available as of their date of entry in the register of utility models of the German Patent and Trademark Office (DPMA) and then represented prior art in terms of Article 54(2) EPC. It was not relevant whether on that date a member of the public actually inspected the file.
In T 1829/06 the board stated that, according to established jurisprudence, information was considered to be made available to the public even if only one member of the public had access to it and there was no bar of confidentiality restricting the use or dissemination of such information. The fact that this member of the public acted as a straw man or that the opponent itself could have had difficulties in obtaining the article was immaterial.
2.2 Obligation to maintain secrecy
In T 1309/07 the board ruled that it was clear from the file that 17 520 combustion-engine pistons of a certain type had been supplied to Renault before the priority date. The question was whether, at the time of delivery, a tacit secrecy agreement had applied. In view of the large quantity involved, and the fact that pistons of this type were offered in a pre-published spare-parts catalogue, the board took the view that they had been supplied not for test purposes but for normal series production, so from that point onwards no such agreement could have existed.
In T 1464/05 the board considered that an amount of 200 kg of the product, although clearly a bigger amount than the small sample initially delivered, would not have been sufficient for the production of optical cables on a commercial scale, but at the most for possibly carrying out tests in the production of optical cables and with the cables so obtained. It stated that the mere fact that a product has been delivered possibly for carrying out tests in what appears to be the result of an ordinary commercial transaction does not constitute by itself, in the absence of any other special circumstance or supporting evidence, a sufficient condition for concluding that the product was necessarily delivered under an implicit confidentiality agreement (see in this respect decisions T 602/91, T 264/99, T 913/01, T 407/03 and T 1510/06). In the particular circumstances of the case, and with reference to the delivery involving 200 kg of the product, not only was there no indication that any express secrecy agreement existed between the two companies, but also no indication that any particular or special relationship existed between the two companies other than the ordinary relationship between a seller and a buyer. As held in decision T 681/01, "there must be something in the circumstances that suggests that a confidential relation existed before a delivery which appears to be the result of an ordinary commercial transaction can be disregarded as not making the delivered goods available to a member of the public". See also under D.1., skilled person.
2.3 Prior use - issues of proof
In T 738/04 the board noted that it was the established practice of the boards of appeal to apply the criterion of "absolute conviction" rather than "balance of probabilities" in cases of prior public use for which the evidence lies entirely within the sphere of the opponent (see T 472/92, OJ EPO 1998, 161, later reiterated in decision T 97/94, OJ EPO 1998, 467). This implied not only that the reasoning referred to by the appellant should be complete and conclusive but also that all facts supporting that reasoning be fully substantiated by corresponding evidence. This requirement was the consequence of the principle according to which parties representing opposite interests should be given equally fair treatment and derives from the contentious character of the post-grant opposition proceedings (see G 9/91, OJ EPO 1993, 408).
The board found that it was essential for the opponent to decide, when filing the notice of opposition or, at the latest, when filing the statement setting out the grounds of appeal, on which prior use the objection against the granted patent would be based. In a situation like the one at issue, in which the elaboration of a norm led to a multiplicity of factual situations possibly each constituting on its own a prior use (various printed versions of the norm, multiplicity of meetings, public enquiry, etc.), the opponent should, from the outset of the opposition proceedings or ensuing appeal proceedings, have identified those situations which for it would have the highest chance of success, i.e. those situations in respect of which he would be able to produce evidence complete enough to support the desired conclusion. In the opinion of the board, it would have been unfair to allow the appellant in the course of inter partes proceedings to extend the case originally put forward in relation to one specific situation to other situations, even if these situations arose in the framework of one and the same general elaboration process.
3. Novelty of use
3.1 Second (or further) medical use
3.1.1 Format of the so-called Swiss-type claim
The new Article 54(5) EPC has eliminated any legal uncertainty on the patentability of further medical uses. It unambiguously permits purpose-related product protection for each further new medical use of a substance or composition already known as a medicine. This protection is equivalent, as far as the further uses are concerned, to that offered by the Swiss-type claim. In contrast to Article 54(5) EPC 1973, which provided broad (generic) protection for the first use in a medical method, new Article 54(5) EPC is expressly limited to a specific use in such a method. This limitation was intended to match as closely as possible the scope of protection to the scope provided by a Swiss-type claim (see Special edition No. 4 of OJ EPO 2007, 54).
The Enlarged Board of Appeal held in G 2/08 (OJ EPO 2010, 456) that, where the subject-matter of a claim is rendered novel only by a new therapeutic use of a medicament, such claim may no longer have the format of a so-called Swiss-type claim as instituted by decision G 5/83 (OJ EPO 1985, 64). As Article 54(5) EPC now permits purpose-related product protection for any further specific use of a known medicament in a method of therapy, the loophole existing in the provisions of the EPC 1973 is now closed - when the reason for the law ceases, the law itself ceases.
3.1.2 Difference in the prescribed administration regimen
In G 2/08 (OJ EPO 2010, 456) the application was pending on the date on which the EPC 2000 entered into force. Accordingly, the application was to be considered under the provisions of Articles 53(c) and 54(4) and (5) EPC, and no longer under Article 52(4) and 54(5) EPC 1973. In the application in question, the feature in claim 1 - "once per day prior to sleep" - was not anticipated by the available prior art documents. The board noted that the legal question whether medicaments for use in methods of treatment by therapy, where the only novel feature is a dosage regime, are patentable under Articles 53(c) and 54(5) EPC, was an important point of law, as the situation arose quite frequently. If patenting was to be excluded in such circumstances, then applicants needed to know this for certain.
The Enlarged Board of Appeal held as follows:
Article 54(5) EPC does not exclude a medicament which is already used in the treatment of an illness from being patented for use in a different treatment by therapy of the same illness. Article 53(c) EPC, which lists as an exception to patentability 'methods for treatment of the human body ... by therapy' is clear and unambiguous, and draws a borderline between unallowable method claims directed to a therapeutic treatment on the one hand and allowable claims to products for use in such methods on the other. The two concepts of a method of treatment by therapy and of a product to be used in such a method are so close to each other that there is a considerable risk of confusion between them unless each is confined to its own domain as allocated to it by the law. Article 53(c), second sentence, EPC is not therefore to be interpreted narrowly; on the contrary, it is appropriate to give both provisions (Article 54(5) and Article 53(c) EPC) the same weight and conclude that, in respect of claims directed to therapy, method claims are absolutely forbidden in order to leave the physician free to act unfettered, whereas product claims are allowable, provided their subject-matter is new and inventive. The first sentence of Article 53(c) EPC, prohibiting patent protection of methods for treatment by therapy, is to be read and understood together with the provisions of its second sentence and with those of Article 54(4) and (5) EPC, so that, far from being mutually exclusive, they are complementary. By virtue of a legal fiction, Article 54(4) and (5) EPC acknowledge the notional novelty of substances or compositions even when they are already comprised in the state of the art, provided they are claimed for a new use in a method which Article 53(c) EPC excludes from patent protection. The notional novelty, and thus non-obviousness, if any, is not derived from the substance or composition as such, but from its intended therapeutic use. Article 54(5) EPC refers to "any specific use" and thus, in conjunction with the stated intention of the legislator to maintain the status quo of the protection evolved in the case law of the boards of appeal under G 5/83 in this respect, this use cannot be ex officio limited to a new indication stricto sensu (approving T 1020/03).
The Enlarged Board went on to hold that such patenting is also not excluded where a dosage regime is the only feature claimed which is not comprised in the state of the art. Given the answer to the first question, and, since Article 54(5) EPC may be used in cases of the treatment of the same illness, the "specific use" in the sense of that provision may reside in something other than the treatment of a different illness, that the Enlarged Board held that there is no reason to treat a feature consisting in a new dosage regime of a known medicament differently from the one given to any other specific use acknowledged in the case law. However, it stressed that the whole body of jurisprudence relating to the assessment of novelty and inventive step also applies; in particular the claimed definition of the dosage regime must therefore not only be verbally different from what was described in the state of the art but also reflect a different technical teaching. The jurisprudence on this continues to apply (see T 290/86, OJ EPO 1992, 414; T 1020/03, OJ EPO 2007, 204; T 836/01 and T 1074/06). In respect of second and further medical indications, the EPC now allows use-related product claims directed to the substance itself, whereas under the EPC 1973, G 5/83 allowed claims directed to the use of a substance for the manufacture of the drug for a therapeutic indication ('Swiss-type claims'). It appears that the rights conferred on the patentee by the claim category under Article 54(5) EPC are likely to be broader and could lead to possible restrictions on the freedom of medical practitioners to prescribe or administer generics.
3.2 Second (or further) non-medical use
3.2.1 Claims directed to the use of a known compound
In T 1855/06 the board said G 2/88 and G 6/88 (OJ EPO 1990, 93 and 114) related to the novelty of second non-medical uses, and concerned claims directed to the use of a known compound for a particular purpose. However, in the present case that purpose was expressed as the manufacture of elastane fibres having a particular property, so that claim 1 as formulated was more like the kind of "Swiss-type claim" suggested in G 1/83 (OJ EPO 1985, 60) and which had been considered appropriate in cases of new second medical use.
In G 1/83, Swiss-type use claims had been regarded as new only in special cases, i.e. where the purpose of manufacturing the product was then to use it for treatment of the human or animal body by surgery or therapy or for a diagnostic method. That exception was intended as compensation for the exclusion from patentability under Article 52(4) EPC 1973 (cf. now Article 53(c) EPC 2000); in other areas, such compensation was not necessary.
The board held that if a claimed new use was undoubtedly a non-medical one, the novelty of using a known compound for the known manufacture of a known product could not be derived from a new property of the product. In such cases, the use of a compound for the manufacture of a product was to be interpreted as a method for manufacturing the product by means of the compound, and could be considered new only if the method of manufacture per se had not previously been made available to the public. To meet G 2/88 and G 6/88, the claimed use would then have to relate to a new form of exploitation of the new property, not merely to the manufacture of a product possessing that property.
If the use's stated purpose related only to improving a known property of the product being manufactured, again there was no new technical activity within the meaning of G 2/88 and G 6/88 if the claim did not require the exploitation of this improvement in some way. Noticing that a known product had a particular property was a mere discovery (following T 279/93) which could not confer novelty on a use claim. To convert this into a patentable invention, and to show the characteristic of a new technical effect as required by G 2/88 and G 6/88, the use referred to in the claim would have to be some new use of the product which exploited the discovery of the improved property for some new technical purpose.
The board said that if the claimed new effect involved no more than noticing an improvement in a product's known property, as opposed to noticing a hitherto unknown property for the first time, a use claim formulated in accordance with G 2/88 and G 6/88 for each use of that improvement would certainly not be the way to delimit the claimed subject-matter from the prior art. In such cases, a claim vaguely directed to some otherwise unspecified use of the improved property was not enough; instead, the claim should specify the use, making it clear what the use involved and that it was new.
3.2.2 Claim directed to the use of a known process for a particular purpose
In T 1179/07 the board found that the central findings in G 2/88 und G 6/88 (OJ EPO 1990, 93 and 114, see headnote, point III) concerned a claim to the use of a known compound for a previously unknown purpose. No findings were made in those decisions with respect to process claims for a specific use. Although the "use of a compound" could be regarded as a process including the compound use as a procedural step, a use claim could not normally be treated as equivalent to a process claim because Article 64(2) EPC was not, as a rule, applicable to use claims. According to the Enlarged Board in G 2/88 (point 5.1 of the reasons), Article 64(2) EPC was generally not directed to patents whose claimed subject-matter was the use of a process to achieve an effect (this normally being the subject of a use claim) but rather to European patents whose claimed technical subject-matter was a process of manufacture of a product.
Despite the indicated purpose, the process claimed in this case was clearly aimed at manufacturing a product: a procedural treatment of the source product resulted in an end product differing from the source product. Were the board to extend the findings made in G 2/88 and G 6/88 to the granted process claim, this would confer fresh protection under Article 64(2) EPC on the product resulting from granted process claim 1 even though that product was already known from D1 and obtained by precisely the same process as that described in D1. It could not, however, be in keeping with the object and purpose of Article 64(2) EPC to extend its protection to a product obtained by a known process. It was, in particular, this difference in the treatment of process and use claims in the context of Article 64(2) EPC which, in the board's view, left it no scope to extend to process claims the principles laid down by the Enlarged Board in G 2/88 and G 6/88 with regard to the use of a known compound for a previously unknown purpose (see also T 910/98, T 1049/99 and T 684/02).
D. Inventive step
1. Skilled person
In T 1464/05 the board considered the features made available to the public by the public prior use as the closest state of the art. The board stated that, according to established doctrine, the notional person skilled in the art referred to in Article 56 EPC 1973 was assumed to be aware of the totality of the prior art pertinent to the relevant area of technology and in particular of everything made available to the public within the meaning of Article 54(2) EPC 1973. The different means by which the state of the art was made available to the public ranked equally with each other. The notional skilled person was supposed to be aware of all the features of the prior use in suit that had been made available to the public. Thus, although it would be unrealistic to assume that all skilled members of the interested public would have been aware of the features made available to the public by the prior use, the notion of the skilled person under Article 56 EPC 1973 ensured that any obvious development or application of the features of the public prior use by any particular skilled member of the interested public who had gained information on the features made available to the public by the prior use was treated under Article 56 EPC 1973 as such, i.e. as obvious with regard to the state of the art, irrespective of whether or not other members of the interested public had actually become aware of the features of the prior use. See also under C.2.2, obligation to maintain secrecy.
In T 1160/07 the invention related to a method and apparatus for making a shaving razor handle. It had been disputed who was to be considered the person skilled in the art. The board stated that it was common ground that in the development or design of plastic parts such as shaving razor handles, the product design aspect was important, determining the shape and the structure of the specific part and that the product designer was active from the very beginning of the development or design of such a product. However, the board found that towards the end of the product design phase the manufacturing of such a part came more and more into focus and then remained the predominant issue. The person skilled in the art for assessing the inventive step of the claimed method could thus be considered as being a product designer specialised in the specific part to be manufactured who, if not forming a team with an expert in the technology of molding of small plastic parts, would at least consult such an expert.
In T 1030/06 the application related to a system and method for securely buffering content. The board considered that the skilled person was a person of ordinary skill in the art which meant not only having access to the state of the art and common general knowledge in the field, but also the capability to perform routine work and experimentation. Thus, the skilled person could be expected to seek out solutions and make choices to try to solve design problems that cropped up. In the board's view, this was particularly so where the problem was to come up with an implementation of an apparatus having certain required functions. The implementation of the first part of the solution (here the provision of several processors) often leads to further design decisions that must be made (here the choice of encryption scheme and the identification of the source of data) in order to produce a working system. The skilled person could not be expected to abandon the implementation half-way through in the form of a "black box" with undefined means for carrying out the required functions, but must attempt if possible to put such means into practice using knowledge available to him. These would literally be "further ideas" in the sense that they could be new in the given context, but they should be routine and thus not inventive. The board considered that the claimed invention was an obvious solution to the problem of implementing a video processing apparatus that securely uses a frame buffer.
2. Treatment of technical and non-technical features
In T 756/06 the claims related to a display apparatus having a mixture of technical aspects, e.g. automatically calculating a second time scale, and non-technical aspects, e.g. presenting schedule information. The board stated that it is established jurisprudence that such claims are inventions within the meaning of Article 52(1) and (2) EPC, but that the non-technical features cannot support the presence of inventive step. Technical features are generally considered to be those that produce a technical effect.
In practice in such cases, one of two approaches is generally followed. In the first approach (T 931/95, OJ EPO 2001, 441), there is an initial analysis of the technical character of the features of the claim and then a consideration of the inventive step of only those features. This approach is typically used for inventions that are essentially business methods running on more or less well-known computer hardware. The second approach, used e.g. in T 641/00 (OJ EPO 2003, 352), is a more conventional application of the problem and solution approach where the differences with respect to the closest prior art are determined and only those that contribute to the technical character are considered for inventive step. This approach may be more appropriate where the technical part is more substantial and/or relevant prior art exists. It has the advantage that any non-technical feature known from this prior art will not appear as a difference and does not need to be considered in the subsequent steps, thus sparing the step of judging whether it makes a technical contribution. Furthermore, this approach is less abstract since the claimed features can be analysed against concrete prior art. Whichever approach is used, it goes without saying that a proper analysis of the claims must be performed. In particular, a perfunctory analysis involving a loosely paraphrased wording of the claim should be avoided so as not to miss any features that might contribute to the technical character of the claimed subject-matter.
In G 3/08 (OJ EPO 2011, ***) the Enlarged Board of Appeal analysed in detail the relevant case law with regard to the patentability of programs for computers. The Enlarged Board noted that the referral by the President of the EPO did not address any of its questions to the validity of the approach developed by Board 3.5.01 for judging inventive step. In this approach, as summarised in T 154/04 (OJ EPO 2008, 46), only features which contribute to the technical character of the claimed subject-matter are taken into account for the assessment of inventive step. The Enlarged Board was not aware of any divergence in the case law and therefore it would appear that the case law as summarised in T 154/04 had created a practicable system for delimiting the innovations for which a patent may be granted.
3. Denial of inventive step - selection from obvious alternatives
In T 1072/07 the application related to an oxygen-fired front end for a glass-forming operation. The prior art documents proposed two possibilities for solving the problem of choosing the fuel for the burners and thus two types of burners, an air-gas fired burner or an oxygen-gas fired burner. The board concluded that to solve the problem, (how to select a suitable type of burner), the person skilled in the art had to make a choice between two well-known possibilities. Either choice, which in a particular situation would be based on balancing the advantages of the specific type of burner being selected, such as efficiency in its operation, with its disadvantages, such as technical adaptations required and costs involved, was obvious, since the types of burner to be chosen from were well-known.
E. Notion of "industrial application"
1. General issues
In T 18/09 the board noted that the close inter-relationship between Articles 83 and 57 EPC had already been addressed in previous decisions (see e.g. T 898/05). Both provisions related to the obligation of an applicant to give a sufficient description of the invention. In respect of Article 83 EPC, the established case law of the boards of appeal stated that a patent could only be objected to for lack of sufficiency of disclosure if there were serious doubts, substantiated by verifiable facts (see T 19/90, OJ EPO 1990, 476). For the board, it would be unjustified and also unfair to set a different standard of proof in respect of Article 57 EPC. See also under chapter VII.E.5., parallel proceedings.
In T 1450/07 the board noted that the existing case law had established the criteria to be fulfilled for industrial applicability to be acknowledged (see e.g. T 898/05). The information in the application as filed should make plausible the identity of the claimed compound. Thus, the compound could be attributed to a known family of molecules on the basis of a comparison between its primary structure and that of molecules known in the art. Then, its putative functions could be disclosed. Experimental evidence was not necessarily needed. A number of reasonable assumptions could be made by taking into account the known functions of other family members as well as, for example and not exclusively, by taking into account the distribution of the claimed compound in the body. The treatments therein mentioned were in relation to the function plausibly attributed to the molecule. Post-published evidence backing up these assumptions was always welcome. In fact, the more information the better, and the quality of the information was also fundamental. The board pointed out that each case had to be evaluated on its own merits. In accordance with the above-mentioned case law and taking into account the sum total of this information, the board decided in the case at issue that the requirement of industrial applicability was fulfilled.
II. CONDITIONS TO BE MET BY AN APPLICATION
A. Sufficiency of disclosure
1. Clarity and completeness of disclosure
(a) Indication of at least one way of carrying out the invention
The description in the original application before the board in T 990/07 was partly erroneous. Examples were immediately recognisable by the skilled person as containing a number of errors. Correction of the examples and the corresponding passages in the description were not permitted under Rule 139 EPC. Some of the different corrections possible would have contravened Article 123(2) EPC 1973. Nonetheless, on the facts of the case, the invention was held to meet the requirements of Article 83 EPC 1973.
The board had then to decide whether, in the absence of any other example actually embodying the claimed invention, the request, which fulfilled the requirements of Article 83 EPC 1973, should nevertheless be rejected on the basis of Rule 27(1)(e) EPC 1973. The board decided that it should not. The purpose of the 'examples' evoked in Rule 27(1)(e) EPC 1973 appeared primarily to be to complete an otherwise incomplete teaching. As a consequence, the application could not be refused under this provision, if the description was considered to describe, despite the presence of erroneous drawings and the resulting lack of examples actually embodying the invention, 'one way of carrying out the invention'.
2. Reproducibility without undue burden
In T 1063/06 (OJ EPO 2009, 516) the board held that a formulation of a claim whereby functionally defined chemical compounds were to be found by means of a new kind of research tool using a screening method set out in the description constituted a reach-through claim which was also directed to future inventions based on the one now being disclosed. As the applicant was entitled to claim patent protection only for his actual contribution to the art, it was therefore both reasonable and imperative to limit the claim's subject-matter accordingly. Patent protection under the EPC was not designed for the purpose of reserving an unexplored field of research for a particular applicant, as reach-through claims did, but to protect factual results of successful research as a reward for making concrete technical results available to the public.
According to T 1063/06, a functional definition of a chemical compound (in this case in a reach-through claim) covered all compounds possessing the capability according to the claim. In the absence of any selection rule in the application in suit, the skilled person, without the possibility of having recourse to his common general knowledge, had to resort to trial-and-error experimentation on arbitrarily selected chemical compounds to establish whether they possessed the capability according to the claim; this represented for the skilled person an invitation to perform a research programme and thus an undue effort (following T 435/91).
In T 1886/06, the board considered the conclusion in T 256/87 that all that had to be ensured was that the skilled person reading the specification would be able to carry out the invention in all its essential aspects and know when he was working within the forbidden area of the claims. The board held that this could not mean, conversely, that if the claims used a term undefined under Article 84 EPC 1973 the invention necessarily became impossible to carry out within the meaning of Article 83 EPC 1973 in the absence, in the description or the common general knowledge of the skilled person, of concrete indications towards a possible definition; doubts as to the claims' reproducibility over their entire scope had to be substantiated by verifiable facts. A mere conjecture that their scope might extend to undisclosed variants was not enough.
3. The relationship between Article 83 and Article 84 EPC
3.1 Article 83 EPC and support from the description
The board in T 1225/07 referred to the established case law of the boards of appeal, according to which, in an invention like the one at issue, characterised by a result to be achieved, the information in the application must enable the skilled person to achieve the envisaged result within the whole ambit of the claim containing such a functional definition without undue difficulty. In addition, the description, with or without the relevant common general knowledge, must provide a fully self-sufficient technical concept as to how this result is to be achieved. If this is not the case the invention is to be considered as not having been sufficiently disclosed (referring to T 713/98).
3.2 Article 83 EPC and the clarity of claims
The board in T 608/07 found the issue before it with regard to sufficiency of disclosure was quite similar to the situation in T 256/87, both cases concerning an insufficiency which arose through ambiguity. Although the board accepted that, depending upon the circumstances, such an ambiguity might very well lead to an insufficiency objection, it should be borne in mind that this ambiguity also related to the scope of the claims, i.e. Article 84 EPC 1973. Since, however, Article 84 EPC 1973 was in itself not a ground of opposition, care had to be taken that an insufficiency objection arising out of an ambiguity was not merely a hidden objection under Article 84 EPC 1973. The board was convinced that, for an insufficiency arising out of ambiguity, it was not enough to show that an ambiguity existed, e.g. at the edges of the claims. It would normally be necessary to show that the ambiguity deprived the person skilled in the art of the promise of the invention. It went without saying that this delicate balance between Articles 83 and 84 EPC 1973 had to be assessed on the merits of each individual case.
III. AMENDMENTS
1. General issues
Although the selection of explicitly disclosed borderline values defining several (sub)ranges, in order to form a new (narrower) sub-range, is not contestable under Article 123(2) EPC when the ranges belong to the same list, the combination of an individual range from this list with another individual range emerging from a second list of ranges and relating to a different feature is not considered to be disclosed in the application as filed, unless there is a clear pointer to such a combination (T 1511/07).
In T 1374/07, the appellant argued that there was only one list and not two lists as required by several decisions and that a preferred selection of two members from one list had nothing to do with the selection of two members out of two lists. This statement was, however, in the board's view not correct, since a selection of two components from one list is in fact equivalent to a twofold selection from two identical lists (see T 811/96). Therefore the board could not agree with this argument.
2. Intermediate generalisation - non-disclosed combinations
T 879/09 gives an example of cases dealing with intermediate generalisation. It concerned a case where the examining division rejected the application as infringing Article 123(2) EPC. The board stated that a patent application described an invention in general terms together with one or more detailed embodiments. In order to overcome an objection of lack of novelty and/or inventive step the applicant often adds some but not all the features from the detailed embodiments to the general disclosure. This results in an object that lies between the original general disclosure and the detailed embodiments. This is called an "intermediate generalisation" in patent jargon, although a better term would be "intermediate restriction" to make clear that it is in fact a restriction from the more general original disclosure (T 461/05). Such an intermediate restriction or generalisation is permissible under Article 123(2) EPC only if the skilled person would recognise without any doubt from the application as filed that characteristics taken from a detailed embodiment were not closely related to the other characteristics of that embodiment and applied directly and unambiguously to the more general context (T 962/98). Since the test mentioned above was fulfilled, Article 123(2) EPC was not infringed.
3. Disclaimers
3.1 Decisions applying the criteria established by G 1/03 and G 2/03
In T 8/07 the board had to decide on the allowability of a disclaimer under Article 123(2) EPC. The board observed that G 1/03 (OJ EPO 2004, 413) stated that a disclaimer may serve exclusively the purpose for which it is intended and nothing more. If a disclaimer has effects which go beyond its purpose, it is or becomes inadmissible. Further, the necessity for a disclaimer is not an opportunity for the applicant to reshape his claims arbitrarily (G 1/03, reasons 3). Therefore the disclaimer should not remove more than is necessary to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons. From that the board found that it could not be derived from the reasoning of G 1/03 that a patent proprietor is permitted a degree of discretion or latitude concerning the "border" within which the disclaimer should be drafted with respect to the subject-matter to be excised. On the contrary, the existence of any discretion regarding the extent of the disclaimer as compared to the subject-matter to be excluded would inevitably introduce a degree of arbitrariness in the drafting of the disclaimer. This would conflict with the express findings of G 1/03. It was therefore concluded that in order to comply with the requirements following from G 1/03 with respect to the drafting of disclaimers it was necessary that these be formulated to excise only that subject-matter which could not be claimed. Further the submission of the patent proprietor that it would derive no advantage was not necessarily and inevitably correct since a broad disclaimer, in addition to restoring novelty, would have the further effect of "immunising" the subject-matter claimed against a potential attack of lack of novelty.
In case T 440/04 the question was whether disclaiming example 1 of C63 was sufficient to restore novelty. Whereas on the one hand a disclaimer should not remove more than was necessary to restore novelty, it cannot, on the other hand, be considered to serve its intended purpose when it excises less than what is necessary to restore novelty. The disclosure in C63 of fibres having compositions and properties as required by the claims 1 according to all requests was not strictly limited to the fibres described in example 1 of C63. "Cutting out" the latter fibres was thus not sufficient to exclude from the said claims 1 all those fibres disclosed in C63 having a composition and the inherent properties according to said claims. In the case at issue, the disclaiming of example 1 was thus not sufficient to restore the novelty of the claimed subject-matter over C63.
In T 795/05 the board noted that a disclaimer which has no basis in the application as filed may not be refused under Article 123(2) EPC provided it fulfils the criteria set out in G 1/03. The disclaimer at issue had no basis either explicitly or implicitly in the application as originally filed, although the subject-matter excluded by the disclaimer was supported by the application as filed. Further, the disclaimer was, in contrast to the case under consideration in T 4/80 (OJ EPO 1982, 149), intended to restore novelty over a document belonging to the state of the art according to Article 54(3) EPC, and was as such not disclosed in the application as filed. Therefore the claim at issue was not allowable under Article 123(2) EPC.
In T 1107/06 the board observed that prior to the decisions G 1/03 and G 2/03 of the Enlarged Board of Appeal (OJ EPO 2004, 413 and 448) it was widely accepted that a disclaimer could in principle be allowed when the subject-matter to be excluded was disclosed in the European patent application as filed as an embodiment of the invention. This principle emerged from the very first decision (T 4/80, OJ EPO 1982, 149) allowing the introduction of a disclaimer into a claim. This decision justified the allowability of the disclaimer not by its purpose, but by the fact that the subject-matter to be excluded was originally disclosed by the applicant as a possible embodiment of the invention. The principles developed in decision T 4/80 were applied or cited with approval in several other decisions (see e.g. T 80/85, T 98/94, T 673/94). However, a more restrictive approach had recently emerged in the case law of the boards of appeal (see T 1050/99, T 1102/00, T 236/01, T 868/04, T 795/05, T 1559/05), according to which disclaimers which exclude subject-matter disclosed as an embodiment of the invention were regarded as non-disclosed disclaimers and held unallowable unless they fell under one of the exceptions laid down in decisions G 1/03 and G 2/03.
In case T 1068/07, the board stated that, as observed in G 1/07 (reasons 4.2.3), following decisions G 1/03 and G 2/03, which dealt with the issue of the so-called "undisclosed" disclaimers, different opinions have been expressed in the jurisprudence of the boards of appeal on whether the findings of said decisions relate also to the disclaiming of embodiments which are disclosed in the application as filed as part of the invention. Indeed, on the one hand, a series of decisions, by applying the notion of "undisclosed disclaimers", did not allow disclaimers based on such embodiments (T 1050/99; T 795/05). This approach has been adopted in the Guidelines for Examination of April 2010 (C-III-16, point 4.20). On the other hand, the decisions T 1107/06 and T 1139/00 have adopted the approach whereby the criteria established in the decisions G 1/03 and G 2/03 do not apply and, consequently, a disclaimer can be allowed based on such "disclosed" embodiments. The board, in case T 1068/07 stressed that whether the first approach was followed rather than the second made a decisive difference in the case at issue. The board therefore decided to refer the following question to the Enlarged Board of Appeal: "Does a disclaimer infringe Article 123(2) EPC if its subject-matter was disclosed as an embodiment of the invention in the application as filed?". The case is pending under G 2/10.
4. The application as originally filed - formal aspects
4.1 Subsequent addition of details
In T 2321/08 the board considered the question of whether Rule 27(1)(b) EPC 1973 required that prior art known to the applicant be acknowledged in the application already at the time of filing it. The board came to the conclusion that Rule 27(1)(b) EPC 1973, or equivalent Rule 42(1)(b) EPC, does not put a stringent obligation on the applicant to acknowledge prior art known to him, and to cite documents known to him reflecting this prior art, already at the time of filing the application. Furthermore, no requirement of the EPC prohibits amending an application in order to meet the provisions set out in Rule 27(1)(b) EPC 1973 or Rule 42(1)(b) EPC (followed by T 1123/09).
5. "Tests" for assessing the allowability of an amendment
5.1 Direct and unambiguous deducibility of amendments from the application as filed
The board in T 1125/07 stated that, in order to determine whether or not the subject-matter of a claim in a patent extends beyond the content of the application as filed, it has to be examined whether that claim comprises technical information which a skilled person would not have objectively and unambiguously derived from the application as filed. The content of an application as filed encompasses what is directly and unambiguously disclosed therein either explicitly or implicitly. In this context "implicit disclosure" means disclosure which any person skilled in the art would objectively consider as necessarily implied in the explicit content, e.g. in view of general scientific laws (T 860/00). Hence, the term "implicit disclosure" should not be construed to mean matter that does not belong to the content of the technical information provided by a document but may be rendered obvious on the basis of that content. Whilst common general knowledge must be taken into account in deciding what is clearly and unambiguously implied by the explicit disclosure of a document, the question of what may be rendered obvious by that disclosure in the light of common general knowledge is not relevant to the assessment of what the disclosure of that document necessarily implies. The implicit disclosure means no more than the clear and unambiguous consequence of what is explicitly mentioned (see T 823/96). See also T 1089/07 which contains similar reasons than T 1125/07.
In T 1107/06, quoting T 860/00, the board took the view that when there is a generic disclosure of the invention together with a specific disclosure of an illustrative or preferred embodiment falling under the generic disclosure, the skilled person will normally infer that all the other embodiments comprised in the generic disclosure without being mentioned specifically also form part of the invention. The non-exemplified or non-preferred embodiments are thus implicitly disclosed as the logical complement of the exemplified or preferred embodiments.
T 985/06 concerned amending the upper limit of a range, supported in the description as filed, to a new (lower) value not thus supported, by changing it from 1.05:1 to 1.4:1 to 1.05:1 to less than 1.4:1. The board acknowledged that "1.05:1 to 1.4:1" included all values within the stated range. However, the application as filed disclosed only the range in general; it did not specifically, and thus directly and unambiguously, disclose all values within it. The amendment therefore contravened Article 123(2) EPC. The respondent/patent proprietor also argued that if the upper limit of the claimed range "less than 1.4:1" lacked support in the description as filed, then it was a disclaimer which did have such support. But the board found that claim 1 did not contain any "negative" technical feature typically excluding from a general feature specific embodiments or areas.
In T 495/06 the appellant/applicant's argument that the amendments were "not inconsistent" with the original disclosure failed to persuade the board, since the applicant thereby invoked a less stringent criterion for compliance with Article 123(2) EPC than that developed in the jurisprudence of the boards of appeal, namely the question whether the amendment was "directly and unambiguously derivable" from the application documents as originally filed. In other words, the fact that an amendment was "not inconsistent" with the description was not a sufficient requirement for complying with Article 123(2) EPC.
In T 824/06 the board stated that for an amendment to be allowable under Article 123(2) EPC required its direct and unambiguous disclosure; reasonable plausibility was insufficient.
In T 314/07, the question arose whether the amendment of the claim directed to the absorbent material was nevertheless directly and unambiguously derivable from a passage of the application as filed not describing the final absorbent material as such but the preparation of the intermediate film used therefor. The particular characteristics of the intermediate film described in the application as filed could be automatically transferred to the final absorbent material only if these characteristics would remain unchanged throughout the process of preparing the absorbent material, or in other terms if the location of the surfactant in the intermediate film was not altered by the process steps leading to the final absorbent material, such as aperturing and bonding the film to the other parts of the article. The board concluded that Article 123(2) EPC was infringed.
In T 2017/07, the board stated that a composition which is specified in a claim to comprise a component in an amount which is defined by a numerical range of values is characterised by the feature which requires the presence of the component within that range, as well as by the implicit proviso which excludes the presence of that component in an amount outside of that range.
Consequently, the amount of that component present in the composition must not exceed the upper limit of the numerical range indicated. An amendment restricting the breadth of that component, for instance by narrowing down a generic class or a list of chemical compounds defining that component, has the consequence of no longer requiring the presence within that numerical range of those chemical compounds no longer encompassed by the restricted definition of that component and, thus, of limiting the scope of this implicit proviso.
A composition which is defined as comprising the components indicated in the claim is open to the presence of any further components, unless otherwise specified. Thus, in a claim directed to an openly defined composition, the restriction of the breadth of a component present therein may have the effect of broadening the scope of protection of that claim, with the consequence that in opposition/appeal proceedings such amended claim may extend the protection conferred by the granted patent (Art. 123(3) EPC).
C. Relationship between Article 123(2) and Article 123(3) EPC
1. Resolving the conflict in exceptional cases
For an example of a "limiting extension" adding subject-matter contrary to Article 123(2) EPC but at the same time limiting the scope of protection vis-à-vis what could have been claimed, so that its removal infringed Article 123(3) EPC, see T 567/08.
IV. DIVISIONAL APPLICATIONS
1. Double patenting
According to T 1423/07, in view of the fact that there are no principles of law generally recognised in the contracting states for refusing a patent application for double patenting, refusal of a European patent application for double patenting cannot be based on Article 125 EPC 1973. If double patenting arises from internal priority, the applicant has a legitimate interest in the grant of the subsequent application claiming priority from an already granted European application with identical claims and identical designated contracting states in view of the fact that the filing date and not the priority date is the relevant date for calculating the 20-year term of the patent.
Moreover, Article 60 EPC 1973 cannot be used as a basis for refusing a European patent application for double patenting either. In particular, Article 60 EPC 1973 cannot be interpreted such that the inventor or his successor in title has a right to the grant of one and only one patent from the EPO for a particular invention, with the consequence that claims comprising subject-matter included in the claims of a patent already granted and belonging to the same applicant are refused no matter whether or not the applicant has a legitimate interest in the grant of the subsequent application.
2. Filing date
Regarding the term "pending" in Rule 25(1) EPC 1973, in J 2/08 (OJ EPO 2010, 100) the Legal Board of Appeal referred the following point of law to the Enlarged Board of Appeal: Is an application which has been refused by a decision of the examining division thereafter still pending within the meaning of Rule 25 EPC 1973 (Rule 36(1) EPC) until the expiry of the time limit for filing a notice of appeal, when no appeal has been filed? The case is pending as G 1/09.
Whereas the legal question referred to the Enlarged Board in case J 2/08 concerned the status of a parent application after its refusal and until the expiry of the period of appeal, if no appeal is filed, the Legal Board was confronted with a different situation in J 5/08. It had to decide whether the parent application was pending at the date of filing of the divisional application which took place after the appeal in the parent application had been filed but before the interlocutory decision by the examining division revised the appealed decision. This "reformatory" revision decision was restricted to the correction of the decision to grant without any exhaustive statement in respect of the patentability of the subject-matter. According to the Legal Board, a revision decision pursuant to Article 109 EPC 1973 as such opens up the possibility that the patentability of the claimed subject-matter will be completely re-assessed, independently of whether or not the cancellation of the appealed decision is expressly ordered or the written reasons are restricted to a specific legal question. In the case at issue, it seemed obvious and self-evident that the grant proceedings having been terminated by the revision decision were still pending up to the date of the revision decision. Hence, the appeal was regarded as allowable and the divisional application as having fulfilled the requirement pursuant to Rule 25(1) EPC 1973, i.e. that the parent application was pending at the filing date of the divisional.
V. PRIORITY
1. Exhibition priority
In T 382/07 it was held that an exhibition priority could not be validly claimed for a European application or patent. The board stated that the possibility of recognising exhibition priorities internationally followed from Article 11 Paris Convention. Its provisions allowed Paris Union member countries to recognise exhibition priorities in their domestic law under certain conditions but did not oblige them to do so. Entitlement to claim an exhibition priority was to be decided on the basis of the national law of the country where protection and priority were claimed, i.e. for a European application or patent the EPC, and not the law of the country where the exhibition took place or a first application claiming the exhibition priority was filed. Since the EPC did not recognise exhibition priorities, any priority claim based on an invention disclosure at an exhibition must fail in the case in hand.
2. First application
In T 477/06 the board held first that since Euro-PCT application D8 had been deemed withdrawn due to non-payment of the designation fees (R. 23a EPC 1973) it was not prior art under Article 54(3) and (4) EPC 1973 for the application in suit. However, it had been filed by the same applicant and earlier than the priority application. In view of the fact that claimed subject-matter was anticipated by the earlier application, the priority application was not the first application within the terms of Article 87(1) and (4) EPC 1973 (cf. Article 8(2)(b) PCT), so that the priority claim was not valid. Hence, the application in suit enjoyed priority only from the date of filing and D8 was prior art under Article 54(2) EPC 1973.
VI. RULES COMMON TO ALL PROCEEDINGS BEFORE THE EPO
A. The principle of the protection of legitimate expectations
1. Examples of the legitimate expectations principle
In J 6/08 the board held that a request (for a decision or re-establishment) filed with a view to obtaining the redressal of a loss of rights within the meaning of Rule 69(1) EPC 1973 (resulting in this case of failure to comply with the one-month period for filing the request for re-dating of the application in accordance with Rule 43(1) EPC 1973; Rule 56(1) EPC, amended) has to be interpreted by the EPO in the light of the requester's objectively discernible will and taking account of the particular circumstances of the case. In case of doubt the Office is obliged to establish what the requester really wanted and may also be obliged to point out any procedural steps still outstanding in connection with this request (in this case, observance of the period of one year under Article 122(2) EPC 1973). If procedural statements are interpreted correctly, it is not consistent with the ship of trust between applicants and the EPO to hold the applicant to the letter of his statements as chosen by him if the interpretation of the whole submission, taking account of the procedural situation, gives rise, at the least, to justified doubts as to whether the literal content of statements actually corresponds to the objectively discernible will of the applicant.
2. Obligation to draw attention to easily remediable deficiencies
In J 2/08 (OJ EPO 2010, 100), the appellant/applicant contended that the EPO had violated the principle of good faith on several occasions (omission to inform in respect of filing a divisional application; publication of the divisional application; late noting of loss of rights). As a result, in the appellant's view, by taking no action (instead of proactively warning the appellant) the EPO induced the appellant to believe that everything was in good order with the divisional application, until it became too late to file an appeal against the decision refusing the parent application. In the board's view it was exclusively the responsibility of the applicant and his representative to decide on the factually and legally most appropriate filing actions to be taken. Furthermore no legitimate expectations concerning the validity of an application may be based on the fact that an application has been published. Finally, the communication under Rule 69 EPC 1973, which is not just a warning but a procedural act, had to be sent after the end of the appeal period.
3. Principle of legitimate expectations where the previous case law is departed from
3.1 Point in time from which a new decision which deviates from existing practice becomes generally applicable
Decision G 2/08 (OJ EPO 2010, 456), concerning a dosage regime, stated that in order to ensure legal certainty and to protect legitimate interests of applicants, the interpretation of the new law given by the Enlarged Board in this decision should therefore have no retroactive effect, and an appropriate time limit of three months after publication of the present decision in the Official Journal of the EPO was set in order for future applications to comply with this new situation. In this respect the relevant date for future applications was their date of filing or, if priority had been claimed, their priority date.
B. Right to be heard
1. General principle
The board in T 1997/08 pointed out that the right to be heard also guarantees the EPO's readiness to note and take account of the applicant's submissions in his reply to a communication. It may be assumed that the right to be heard has been contravened if the reasons given for the examining division's decision merely repeat the reasons given for the communication issued before the said reply. In this case, the reasons given for the contested decision had basically been "copied and pasted" from the grounds set out in the examining division's sole communication. The board held that, for an examining division to give an applicant the right to be heard, its decision had to actually address the arguments put forward by the applicant in its reply to the communication. Since nothing in the decision suggested the division had done so, the board ordered reimbursement of the appeal fee.
2. Non-appearance at oral hearings before the boards of appeal
According to Article 15(3) RPBA 2007, "the board shall not be obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the oral proceedings of any party duly summoned who may then be treated as relying on its written case."
In T 1903/06 the board was aware that the objections against the main and auxiliary requests on file could have been met by suitable amendments, if the appellant's representative had been present at the oral proceedings. However, the board had to decide upon the application only in the text submitted to it by the appellant (Art. 113(2) EPC 1973). In this respect, it agreed with the following conclusions in T 1000/03: "The appellant had been duly summoned, and at the oral proceedings could easily have corrected the above and further minor deficiencies in the description. To delay the decision pending their correction was uncalled for (see Art. 11(3) RPBA 2003). Under Article 113(2) EPC, the board had to keep to the text submitted by the appellant/applicant, who by not appearing at the oral proceedings had taken the risk of the application being refused even for easily remediable deficiencies." Thus, the appellant had to bear the consequences of the failure to appear.
C. Oral proceedings
1. Obligation to give notice if not attending oral proceedings
In T 69/07 the respondent had requested oral proceedings, but did not appear at the oral proceedings at the appointed time. The board noted that, in accordance with Article 6 of the Code of Conduct of Members of the epi, of which the representative is obligatorily a member, the members are required to act courteously in their dealings with the EPO (see also T 1079/07). The representative of the respondent had had sufficient time to inform the board of its intended non-appearance at the oral proceedings. This would have avoided keeping the other party and the board first of all courteously waiting for the representative in case he had unintentionally been delayed, and then obliging the registrar of the board to carry out enquiries to establish if the representative intended to attend the oral proceedings. The board referred to T 954/93 where the facts were similar to those of the case at issue. The board confirmed the views of that board that the actions of the representative were "reprehensible".
2. Fixing or postponing the date for oral proceedings
In T 601/06 the appellant (patent proprietor) requested postponement of the oral proceedings for the reason that 5 May 2009 was a public holiday in the Netherlands, the appellant's representative had firmly booked a holiday for that day and there was no other representative available to replace him due to the holiday season. The board made an attempt to find an alternative date within the following two months. As no alternative date suitable for both parties and for the five-member board could be agreed with the parties, the board informed the parties that the date for oral proceedings was maintained. Moreover the board considered the request to postpone the oral proceedings to be late-filed. The representative should have been aware when receiving the summons that he would be prevented from attending the oral proceedings and should have filed his request immediately. Filing the request more than one month later was not considered to fulfil the requirement of "as far in advance of the appointed date as possible" as required under Article 15(2) RPBA or "as soon as possible" as required in the Notice of the Vice-President of DG 3. The board noted that, in accordance with established case law (see e.g. T 1102/03 and T 1053/06), the provisions of Article 15(2) RPBA and the above-mentioned Notice balance the interests of the parties and the public taking into account, among other factors, an efficient use of resources and capacities of the office. Thus, a request for postponing the date of oral proceedings may be refused if it is late-filed.
In T 1923/06 the board referred to T 275/89 (OJ EPO 1992, 126) according to which the illness of a duly represented party was not a sufficient reason for postponing appointed oral proceedings unless the party who was ill needed to be present. A request to change an appointment could only be allowed if unforeseen, exceptional circumstances had arisen, which either made oral proceedings impossible (such as a representative's or unrepresented party's sudden illness) or could have a decisive impact on the course of the proceedings (such as unforeseen unavailability of an important witness or expert). The board appreciated that a representative might be in a difficult situation if he is unable to receive instructions from his client. However, in the case at issue, the board was not convinced that the client's illness could have had a decisive impact on the representative's preparation of the oral proceedings or the oral proceedings themselves.
3. Request for oral proceedings as a reply to a communication of a board of appeal
In T 1382/04 the appellant had been invited to file observations on the board's communication under Rule 100(2) EPC (2007). Failure to reply to such an invitation in due time would result in the application being deemed withdrawn (Rule 100(3) EPC (2007)). Hence, the board had to ascertain that a reply meeting the requirements of Rule 100(2) EPC (2007) had been received in due time. If no response qualifying as a reply had been received, the case was no longer pending. The question arose because the appellant had not made any substantive observations on the board's communication. The board pointed out that historically, the legal instrument of a deemed withdrawal was introduced for administrative reasons as a means to save the resources of patent offices and courts in cases where the applicant or appellant had clearly lost interest in prosecuting an application. In the case at issue, the board considered the request for oral proceedings, which was received within the time limit for filing observations, as a reply avoiding a deemed withdrawal under Rule 100(3) EPC (2007), since it could not be assumed that the appellant had lost its interest in the application while requesting oral proceedings at the same time, apparently with a view to presenting its comments on the board's arguments orally.
4. Presence of assistants during deliberations of the board
According to Article 19(1), second sentence, RPBA only members of the board may participate in the deliberations; the chairman may, however, authorise other officers to attend. In T 857/06 the board stated that in several EPC contracting states the judicial work of courts, in particular supreme courts and constitutional courts, is supported by assistants. Also the active involvement of assistants in preparing the ground for judicial decisions appeared to be widely accepted. In accordance with this practice, a limited number of assistants supports the EPO's boards of appeal. They are selected in a formal internal recruitment procedure for which only experienced examiners, i.e. permanent employees of the EPO, may apply. The board concluded that discretion under Article 19(1), second sentence, RPBA may be exercised to allow the board's assistant to attend and to take part in the deliberations.
5. Minutes of oral proceedings
In T 508/08 the board agreed with the parties that the opposition division should have responded to appellant's requests for corrections of the minutes of the oral proceedings. The board referred to T 1198/97 where it was stated that even when an appeal has been filed, only the department of first instance before which the oral proceedings took place was competent and at the same time also obliged to decide in the first instance on a request concerning the contents of the minutes of oral proceedings held before it, firstly because it lies within their competence and duty under Rule 76 EPC 1973 to draw up the minutes correctly and completely and secondly because, if anybody, only the members of this department know what has happened and has been said or not said during the oral proceedings before it. The board stated that if the department of first instance (opposition division) saw fit to ignore its obligations (to respond to a request for correction of the minutes) there was nothing the board could do; it had no power to compel the division to fulfil them.
6. Oral proceedings by video conference
In T 1266/07 the appellant/applicant requested that the oral proceedings be conducted by video conference. The board refused the request as being filed late and stated that in future such a request might be allowed. For this to happen, however, it would be necessary for a general framework to exist. Firstly, video conferencing before an examining division is explicitly regulated (see updated information concerning interviews and oral proceedings to be held as a video conference, OJ EPO 2006, 585). There is, however, at present no corresponding provision for the boards of appeal; in particular, it is not mentioned in the RPBA. Secondly, oral proceedings held before the examining division are, in accordance with Article 116(3) EPC, not public, whereas those before the boards of appeal are public, Article 116(4) EPC. It would be necessary to ensure that the use of video conferencing is reconciled with the requirement that oral proceedings before the boards be public.
D. Time limits, further processing and interruption of proceedings
1. Calculation of time limits under Rule 131 EPC
T 2056/08 concerns the calculation of the period for filing an appeal when combined with a ten day period for postal delivery. The applicant argued that the appeal filed on 1 October 2008 against the decision dated 21 July 2008 refusing his application had been filed in due time. If two months were added to the date of the decision and a further ten days according to Rule 126(2) EPC (2007), one would arrive at 1 October 2008.
The board noted that the two month period stipulated in Article 108 EPC started from the day of the presumed or actual notification which in the present case was 31 July 2008. It thus ended on 30 September 2008. If any rule of thumb could be suggested to calculate the appeal period, it should be "ten days plus two months" rather than "two months plus ten days."
E. Re-establishment of rights
1. Due care on the part of the professional representative
In T 1095/06 the board stated that a professional representative could not be required to double-check every action by an assistant. If the professional representative failed to act because he had not received a reminder due to some error of a properly chosen, properly instructed, and reasonably supervised assistant this could be regarded as "an isolated error in an otherwise satisfactory system" which would still allow re-establishment to be granted. However the board stated that a professional representative must be presumed to be supervising his own work continuously. The case law on "an isolated mistake in an otherwise satisfactory system" could not be relied on to ignore a failure to act by the professional representative himself, unless there were special circumstances which made the failure to act compatible with taking all due care. A belief that an action had been performed for which there was no objective basis could not be given any weight as a circumstance to be taken into account under Article 122(1) EPC 1973. Furthermore, the board held that neither the importance of an application to an applicant, nor the technical merit of the invention concerned, were circumstances that could be taken into account in favour of allowing re-establishment.
With regard to the due care to be exercised on the part of a professional representative, the board referred in T 493/08 to the case law according to which ignorance or misinterpretation of EPC provisions could not be excused. In J 6/07 the Legal Board of Appeal affirmed case law to the same effect even where an applicant had not appointed a representative: in general, even in the case of an applicant who acts without the benefit of a suitably qualified representative, a mistake or ignorance as to the law is an insufficient ground for re-establishment. Taking due care requires that a person engaged in proceedings before the Office, even when a layman, should acquaint himself with the relevant rules. Misinterpretation of the law, however, was excused in J 28/92. In this special case the Legal Board held that the misinterpretation of a provision of the EPC by a representative was not without basis or unreasonable and considered that there was no basis for penalising the representative for having arrived at a not unreasonable interpretation of a rule of the EPC, which subsequently turned out to be wrong. The board shared the view expressed in J 28/92 and stated that there might be exceptions to the rule, that an error of law could not be excused, which, however, could be acknowledged only under rigorous criteria.
2. One-year time limit following the expiry of the unobserved time limit
A request for re-establishment of rights is only admissible within the year immediately following the expiry of the unobserved time limit (Art. 122(2), third sentence, EPC 1973; Rule 136(1), first sentence, EPC). Under Rule 136(1), third sentence, EPC (2007), the request for re-establishment of rights is not deemed to have been filed until the prescribed fee has been paid.
In J 6/08 the fee for re-establishment of rights was not paid until after the one-year period had expired. The board referred to the case law (J 16/86, J 34/92, J 26/95, OJ EPO 1999, 668; J 6/98, J 35/03), under which the one-year period fulfils the function of a deadline whose purpose is to ensure legal certainty for the public and the completion of proceedings before the EPO within a sensible and appropriate period of time. In view of the particular circumstances of the case, however, the board considered that re-establishment was not ruled out since the fact that the conditions for re-establishment had not been met in due time - i.e. payment of the fee for re-establishment within the one-year period - was largely to be laid at the door of the Office itself. Where the Office has failed to meet its obligation to provide clarifications or advice, a request for re-establishment filed within the period of one year can, when the principle of the protection of legitimate expectations is taken into account, be treated as valid even though the fee for re-establishment was not paid until after the period of one year had expired. In the present case, the requester's right to be treated as though the non-observance had not occurred can take precedence over third parties' interest in legal certainty, which the one-year period in Article 122(2), third sentence, EPC 1973 is intended to ensure.
3. Removal of the cause of non-compliance
In T 493/08 the board considered that, where a time limit was not observed due to an error of law, the removal of the cause of non-compliance with that time limit occurs on the date on which the applicant actually became aware of the error of law. The board stated that, in an apparent contrast to this view, in T 1026/06 the date when the applicant should have made investigations was considered to be critical, even though the applicant apparently failed to undertake such investigations as a consequence of what was considered to be an error of law.
F. Rules relating to Fees
1. Debit orders
In case T 773/07, which concerned the arrangements for deposit accounts in force until 12.12.2007 (Supplement to OJ EPO 1/2005), the appellant's deposit account held insufficient funds to cover the appeal fee. The board rejected the argument that this fee could or should have been booked before six other fees on the relevant date. It was not for the EPO cashier to choose priorities between fees to be paid, all the more so since it was the responsibility of the account holder to ensure that the account contained sufficient funds at all times (point 5.2 ADA).
2. Reduction of the examination fee
J 1/09 concerned a European divisional application whose parent originated from an international application in which the applicant had paid a second examination fee following a non-unity objection during the procedure before the EPO acting as International Preliminary Examining Authority. The contested decision was the examining division's refusal of a request (based on Article 12(2) RFees 2003 in conjunction with Rule 107(2) EPC 1973) for a refund of 50% of the examination fee paid under Article 94(2) EPC 1973 in respect of the divisional application.
Dismissing the appeal, the Legal Board of Appeal pointed out that Rule 107(2) EPC 1973 governed the reduction of the examination fee payable for an international application which had entered the European phase. It did not apply to divisional applications. Article 12(2) RFees 2003 only laid down the level of the reduction. For the conditions of the reduction it referred to Rule 107(2) EPC 1973. Paragraphs 1 and 2 of Rule 107 EPC 1973 were to be read as a whole, and also in the context of the other provisions of the chapter relating to entry into the European phase (cf. also J 14/07). If the wording of Rule 107(2) EPC 1973 were to be interpreted as a general instruction on fee reductions in all types of proceedings, this provision would properly belong in the Rules relating to Fees (cf. Article 10(2) RFees 2003 on the refund of search fees). Interpreting the provision as a broad, general rule would have inequitable results (also for divisional applications from direct European applications). A divisional application was a new application which was separate and independent from the parent application (cf. Article 76 EPC 1973, G 4/98 and G 1/05). Therefore the divisional application now at issue was to be treated for fee-payment purposes like any other "European" (divisional) application.
G. Procedural steps
1. Appeal procedure
In T 911/06 the board stated that applying the general principles of court procedure to the order of the requests of the appellant proprietor might be inconsistent with the purpose of the appeal procedure inter partes as expressed in the decision G 9/91 (OJ EPO 1993, 408). In the board's opinion, examining new requests in the appeal, when the appellant proprietor had also requested examination of the correctness of the first-instance decision as a lower ranking request, would effectively reduce the appeal procedure to a simple continuation of the first-instance proceedings, although it was apparent from the general logic of the EPC that the appeal proceedings were wholly separate and independent from the proceedings at first instance. The board noted that it had been established in Legal Advice from the EPO No. 15/05 (rev. 2), OJ EPO 2005, 357 as well as in several decisions of the boards that in the case of main and auxiliary requests from the applicant or proprietor in first-instance examination and opposition proceedings, the EPO was bound to the order of these requests. However, this principle did not necessarily apply to second instance proceedings before the boards of appeal. The board considered that it was in line with the purpose of the appeal to examine first whether the department of first instance had correctly assessed the substance of the requests presented to it.
The board decided, in the case at issue, that the correctness of the decision refusing the maintenance of the patent as granted had to be examined first, before examining the new amended claims that were filed during the appeal procedure.
Furthermore, the board considered that merely following the order of the requests presented by the proprietor could deprive the opponent of the right to have his appeal examined before a possible remittal because the subject of the opponent's appeal, namely the amended form of the patent as maintained by the opposition division, is presented by the proprietor only as a second auxiliary request. This would not be equitable.
The board decided, after examining the correctness of the decision refusing the maintenance of the patent as granted, to examine the correctness of the decision maintaining the patent in the particular amended form that was the subject of the appealed decision before examining, and deciding upon, the patent in any other amended form finally requested.
H. Law of evidence
1. Hearing witnesses and experts
In T 61/07 the board made clear that the doubts cast by the respondent on the witness's memory concerned not the witness's credibility but the credibility of his testimony. However, it saw no reason to doubt that his testimony was credible. Just because the witnesses had each independently met a third witness before being heard did not automatically mean that their recollections had been influenced. Shortly before a party alleges prior use, witnesses are normally sounded out about what they actually remember. Such a discussion with a potential witness did not automatically imply that during it the party or one of its staff had influenced what the party remembered. Quite possibly, it was a way of refreshing the memory.
The board did not find it unusual that the witness was unable to remember a particular name, given that he was being asked about events which had happened 23 years ago. On the contrary, it would have been more suspicious had he demonstrated a selective memory enabling him to recall the tiniest details of the case.
2. Taking of evidence - scope and right to be heard
Whilst a party may choose not to rely on a particular piece of evidence in the file, the board in T 95/07 was not aware of any legal mechanism for removing arbitrarily or by simple preference of that party elements of evidence already cited and forming part of the proceedings and the public file from the outset. On the contrary, by analogy with the finding of T 270/94, the contested document formed part of the legal and factual framework within which the examination of the opposition was to be conducted. Pursuant to Article 113(1) EPC each party must be allowed to comment on any evidence legitimately submitted in the proceedings. Allowing one party, even the party having originally submitted that evidence, unilaterally and arbitrarily to require such evidence to be excluded from consideration would infringe this right.
I. Representation
1. Oral submissions by an accompanying person
1.1 General
In T 520/07 the board did not share the respondent/patentee's view that the appellant could not be surprised by its request, the same accompanying person having already made submissions in oral proceedings before the opposition division. In all procedural matters, appeal proceedings were completely separate from first-instance proceedings, so requests made in the latter had no effect on the former.
For a classic application of the requirements set out in G 4/95 (OJ EPO 1996, 412) to a party's contention that, since the accompanying person was preparing for the European qualifying examination, he ought to be given a training opportunity, see T 378/08.
J. Decisions of EPO departments
1. Suspected partiality
Article 24(3) EPC stipulates that members of a board of appeal may be objected to by any party for one of the reasons mentioned in paragraph 1 of Article 24 EPC, or if suspected of partiality.
In the interlocutory decision of the Enlarged Board of Appeal G 3/08 dated 16 October 2009, it was noted that, according to the established case law of the boards of appeal, of the Enlarged Board and also of national courts of member states, the mere fact that a board member had, on a previous occasion, expressed a view on the legal issue to be decided be it in a prior decision or in literature, be it in a prior position in the EPO or as an expert for external political institutions, could not lead to the conclusion of doubts as to impartiality. Nor did a purely subjective impression that the opinions of a board member might be disadvantageous to a particular interest justify an exclusion.
1.1 Members of the examining divisions
In T 1574/05 although the contested decision was based on the lack of novelty of the subject-matter, the decision also contained an obiter dictum to the effect that inventive step was lacking. The board stated that although such obiter dicta did not form part of the reasons for the decision, they were permissible where they could help to prevent remittal of a case to the department of first instance if the grounds for the contested decision were overturned. But they certainly did not constitute a prejudgement of the case by the department of first instance, necessitating a change in the composition of the division concerned in case of remittal. In other words, these obiter dicta did not carry an a priori risk of partiality.
1.2 Members of the Enlarged Board of Appeal
A request pursuant to Article 24(3) EPC that a particular member of the Enlarged Board of Appeal not sit in the case for the referral pending under G 2/08 (OJ EPO 2010, 456) (Dosage Regimen) was filed by professional representatives acting on behalf of their clients. The complaint relied on the fact that the member concerned had chaired the technical board of appeal which decided a previous case. It was alleged that it would be very difficult for the member concerned to approach the issues to be decided in the pending referral with an open mind and furthermore, that this would be seen to be the case by those who were interested in the outcome of this referral.
The Enlarged Board decided to proceed with the procedure under Article 24(4) EPC as prescribed by Article 4(1) RPEBA (2007) in fine. It noted that the boards of appeal and the Enlarged Board of Appeal respectively act as judicial bodies and apply general principles of procedural law. Duly established by law, members of the Enlarged Board of Appeal have the duty to sit in the cases allocated to them according to their jurisdiction both "ratione legis" and "ratione materiae". That is, parties to judicial proceedings have a right to have their case considered and decided by the judge designated or appointed by law (Droit d'être jugé par son juge naturel; Recht auf den gesetzlichen Richter). Further, once established by law, the judge is deemed to act in good faith and is therefore presumed impartial until proven otherwise (see ECHR, De Cubber v. Belgium, 26 October 1984; ETTL v. Austria, 23 April 1987; Hauschildt v. Denmark, 24 May 1989; Academy Trading Ltd et al. v. Greece, 4 April 2000). It accepted as its own the reasoning developed in decision G 1/05 (OJ EPO 2007, 362) and reiterated that "to the extent that participation in a referral pending before the Enlarged Board of Appeal of a board member having already dealt with the matter as a member of a board of appeal is not excluded by these provisions, an objection of partiality cannot be based on that very same fact alone". It decided that there was nothing, in the member of the Enlarged Board's behaviour or in the decision, that could justify any suspicion against this member, who therefore remained a member of the Enlarged Board of Appeal in the case at issue.
The Enlarged Board noted that the decision in question was taken by a board of appeal composed of three members, and as such reflected the reasoning and findings of the board as a judicial body rather than those of its respective members. Decisions are taken by majority vote and deliberations are secret. It could not be presumed that the decision represented the personal thoughts of the member concerned.
2. Form of decisions
2.1 Reasons for the decision
According to Rule 111(2) EPC (former Rule 68(2) EPC 1973) the decisions of the European Patent Office open to appeal shall be reasoned.
In T 1612/07 the board noted that Rule 68(2), first sentence, EPC 1973 (now Rule 111(2) EPC) stated that decisions of the EPO which are open to appeal shall be reasoned. This means, according to established case law, that a decision must contain, in logical sequence, those arguments which justify the tenor and that all facts, evidence and arguments which are essential to the decision must be discussed in detail (T 278/00, T 963/02, T 897/03). Consequently, if a decision was merely reasoned by a reference to one or more preceding communications, the requirement of Rule 68(2), first sentence, EPC 1973 was only met if the referenced communications themselves fulfil the above-defined requirements. In the case at issue, the board came to the conclusion that the communications did not deal with the applicant's arguments, neither did the standardised final decision. The decision under appeal was not sufficiently reasoned within the meaning of Rule 68(2) EPC 1973. The board noted that it did not generally object to a refusal of an application with reasons drafted in a standardised form by making reference to one or more preceding communications, in cases in which an applicant had requested a decision "according to the state of the file". However, this form of decision should be chosen only exceptionally in clear-cut cases in which the reference to previous communication(s) amounted to a complete reasoning, avoiding any ambiguities as to the exact content and extent of the grounds for refusal and in which the communications had dealt with the applicant's arguments (if any).
2.2 Signatures on a decision
The issue in T 211/05 was whether a director was empowered to sign a decision not as a member of a division but on behalf of a second examiner who could no longer do so. The board in T 1170/05 had found that in the exceptional situation of an examining division member being unable (having deceased, in this case) to sign the reasoned written decision after the decision had been announced at the end of oral proceedings, it was acceptable for the written decision to be signed by the division's chairman on his behalf, provided the grounds for the decision reflected the conclusions reached by the complete division when deliberating at the end of the oral proceedings. In T 390/86 and T 243/87, two other boards had taken a similar line in connection with opposition divisions. But the position in the present case was very different, there having been no oral proceedings and therefore no decision pronounced at them in the presence of all the members of the examining division.
The board decided that, in contrast to the cases mentioned above, it was not possible to establish that the decision refusing the application had been taken by the three members forming the examining division. The director's signature on behalf of the second examiner was invalid because nothing in the EPC 1973 authorised a director to sign on behalf of a member of an examining division to which he did not himself belong. Authorisation was not implicit in his position as the examiner's line manager. The last sentence of Article 18(2) EPC implied that the decision taken was based on the individual votes of the examiners appointed to form the division in question. Also, if the director signed there was no guarantee that the second examiner had played a full part in the decision-making process and that the grounds for the decision were the outcome of the deliberations of the division as duly composed. The board therefore found that because the contested decision had not been taken by the full examining division, as officially composed, it was invalid and had to be set aside.
In J 14/07 the board noted that, according to the established case law, whether a document constitutes a decision or not depends on its substance and not on its form (J 8/81, OJ EPO 1982, 10; J 26/87, OJ EPO 1989, 329). In the case at issue the communication refusing the request for reimbursement of 50% of the examination fee constituted a decision within the meaning of Article 106(1) EPC 1973. The fact that it was not signed did not make void the authoritative and binding character of the refusal contained in the communication, since the formalities officer was competent to decide on the request for reimbursement of the fee (Rule 9(2) EPC 1973 in conjunction with paragraph I, point 22 of the Notice from the Vice-President of Directorate-General 2 of the European Patent Office dated 28 April 1999 concerning the entrustment to non-examining staff of certain duties normally the responsibility of the examining or opposition divisions, OJ EPO 1999, 504). Therefore, although not expressly indicated in the communication, as it should have been, it was also clear that the formalities officer acted on behalf of the examining division. The board stated that the mere indication of the name of the formalities officer without any signature, but which had been replaced by a seal, complied with the requirements of the then current Rule 70(2), first sentence, EPC 1973 because the communication was produced by using a computer. Therefore the communication constituted a binding and definite refusal of the request for reimbursement of 50% of the examination fee and constituted an appealable decision within the meaning of Article 106(1) EPC 1973.
K. Other procedural questions
1. Language privilege
In T 700/05 the board found that, taking into account that Euro-PCT applications were deemed by Article 153(2) EPC to be European applications and the principle that they thus had to be treated as favourably as applications made in a contracting state, a PCT application originally filed in Japanese had to be treated in the same way as an application filed in the language of a contracting state which language was not an official language of the EPC. The provision of Article 14(2) EPC 1973 had thus to be applied by analogy to allow also the translation into English of an original PCT application in Japanese to be brought into conformity with the original Japanese text of the application throughout the proceedings before the EPO, i.e. also including opposition and appeal proceedings.
L. Interpretation of the EPC
1. The Vienna Convention on the Law of Treaties
In G 1/07 (OJ EPO 2011, ***) the Enlarged Board of Appeal noted that authority for the principle that exclusions to patentability must be construed narrowly was found in Articles 31 and 32 of the Vienna Convention on the Law of Treaties. The case law of the boards of appeal had stressed this repeatedly, including the Enlarged Board of Appeal in decision G 5/83 (OJ EPO 1985, 64). In its opinion G 1/04 (OJ EPO 2006, 334) the Enlarged Board stated obiter that the principle of narrow construction of exclusions did not apply without exception; in the case in point the Enlarged Board did apply the diagnostic methods exclusion narrowly.
The Enlarged Board held that no general principle of narrow interpretation of exclusions from patentability which would be applicable a priori to the interpretation of any such exclusions can be derived from the Vienna Convention. Rather, the general rule in Article 31, point 1 of the Vienna Convention that a treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose must apply to the exclusion clauses contained in the EPC in the same manner as to any other provision. If the interpretation of the provision concerned according to these principles of interpretation leads to the result that a narrow interpretation is the right approach then and only then is such restrictive meaning to be given to it.
VII. PROCEEDINGS BEFORE THE EPO
A. Preliminary and formalities examination
1. Correction of priority declarations
In J 16/08 the request for correction of the designation of states was allowed in the unusual circumstances of the case. Following the case law summarised in J 7/90 (OJ EPO 1993, 133) and endorsed in J 6/02, the board applied the three conditions to be met by such a request for correction - firstly, that the error was an excusable oversight; secondly, that the request for correction was filed without undue delay upon discovery of the error, and thirdly, that the request for correction was, in the public interest, made early enough to enable publication of a warning with the European patent application. No such warning was required in the circumstances of this case, as the application had erroneously been published showing all contracting states as designated. Third parties were therefore not prejudiced by the correction, since no publication had ever indicated that the territorial scope of the invention was limited to two contracting states.
B. Examination procedure
The purpose of the examination is to ensure that the application and the invention to which it relates, meet the requirements set out in the relevant articles of the EPC and Rules of the Implementing Regulations.
1. Issue of a further communication under Article 113(1) EPC
Under Article 113(1) EPC, the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments.
In T 1870/07 an IPER was sent, a communication of the examining division followed, and then the decision was taken. The single communication from the examining division pursuant to Article 96(2) EPC 1973 merely signalled agreement with the IPER, indicating lack of novelty with respect to a number of documents, merely referring to passages thereof cited in the European Search Report without further explanation or amplification. The board noted that in order to be able to properly comment on the reasons for the decision, the party needs to know which facts are considered to be established, on which basis, which legal provisions are applied, and the logical process according to which the facts are considered to fulfil the requirement of the applied provision. All these together constitute the logical chain on which the decision is based, i.e. the reasons for the decision (see, for example, T 951/92). The board did not see any objection to citing an IPER from an International Preliminary Examining Authority other than the EPO, provided that it constituted a reasoned statement. However, in the case before the board in its view, the IPER failed to meet the above-cited requirements of a reasoned statement. Moreover, in the communication of the examining division, there was no logical chain of reasoning which would have permitted the appellant to understand and deal with the novelty objection, either by amendment or counterargument. Article 113(1) EPC 1973 was, therefore, not satisfied.
In T 1854/08 the applicant was informed by e-mail that the three newly filed requests were not admitted into the proceedings because they introduced substantial obscurities. The board stated that the applicant had not been given any opportunity to present his comments to overcome the negative position expressed in the e-mail. Contrary to that, he had had to gather from the e-mail that it was no longer possible to convince the examining division. This followed from the fact that the refusal to admit the newly filed request was not presented as a provisional opinion of the division but as a decision which could not be overturned. This contravened Article 113(1) EPC where it was laid down that the decisions of the European Patent Office may only be based on grounds on which the parties concerned have had an opportunity to present their comments. As contravening Article 113(1) EPC constituted a substantive procedural violation, the board remitted the case to the department of first instance for further prosecution (Art. 11 of the RPBA). The board stated that it was questionable whether an e-mail could constitute a communication under Article 96(2) EPC 1973 to file observations within a period to be fixed by the examining division. However, as the case had to be remitted for the above-mentioned reasons alone, this point had not to be decided.
2. Withdrawal of the patent application or abandonment of parts thereof
A valid notice of withdrawal which has been received at the EPO is binding on the applicant, although, in the case of withdrawal by mistake, Rule 139 EPC (Rule 88 EPC 1973) may be applicable.
In J 10/08 the matter to be dealt with was the request of the appellant to retract this withdrawal under Rule 139 EPC (2007) because it was, according to the appellant, made erroneously. This rule allowed correction of errors in documents filed with the EPO, these errors being defined as linguistic errors, errors of transcription and mistakes. In the case under consideration the document filed with the EPO did not show any kind of such an error. The error was not of a factual kind but of a mental one. Therefore it had to be examined whether the correction of such an error could also be subsumed under Rule 139 EPC (2007).
The board noted that the boards of appeal have dealt with this question in a great number of decisions. One of those decisions on the question of a possible retraction of a procedural declaration was J 10/87 (OJ EPO 1989, 323) with reference to earlier decisions. In this decision the board developed the preconditions under which a correction of a procedural declaration might be allowed, namely that the public had not been officially notified of the withdrawal by the EPO, that the erroneous withdrawal was due to an excusable oversight, that the requested correction would not delay the proceedings substantially and that the interests of third parties who might have taken note of the withdrawal by inspection of the file were adequately protected. The board accepted that it was not the intention of the appellant in the case before it to withdraw the application but that this was due to a misunderstanding between the various representatives of the appellant dealing with the case. In the case at issue, the board concluded that the public would not have been misinformed or misled by the information published in the European Patent Register and the withdrawal of the application could be retracted in the case before it by correction under Rule 139 EPC (2007).
C. Special features of opposition and appeal proceedings
1. Late submission
1.1 Examination as to relevance
In the jurisprudence of the boards of appeal, the technical relevance of late-filed documents has been considered to represent a criterion for their admissibility which is as decisive as other criteria of a procedural nature, see T 1002/92, OJ EPO 1995, 605. In T 931/06 the contested patent and the document E3 both related to the same technical field concerning the production of personalised portable data carriers and dealt with the same purpose essentially consisting in the provision of a card-issuing system able to handle multiple types of personalised cards. The board considered document E3 at least as relevant as the other prior art. The board stated that when assessing inventive step, a late-filed document may be considered if it belongs to the same or a closely related technical field and discloses subject-matter conceived for the same or a similar purpose as the contested patent. In the light of T 1002/92 such a document would then be prima facie relevant in the sense that it might prejudice the maintenance of the patent, at least in unamended form.
In T 1774/07 it was only two months before oral proceedings and more than one year after the respondent's reply, that opponent 1 submitted a thorough argumentation on the inventiveness of the claimed subject-matter based on the combination of several documents which had not been addressed by the appellant. The board referred to Article 13(3) RPBA that amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the board or the other party cannot reasonably be expected to deal with without adjournment of the oral proceedings. The board found that, in the case at issue the respondent, in the absence of any reply by opponent 1 to the statement of the grounds of appeal, could have only expected that opponent 1 would present at the oral proceedings arguments within the legal and factual framework of the initial appeal and not a different case. Moreover, the respondent had only two months before oral proceedings to prepare itself for the new case submitted by opponent 1. This was, independently of the complexity of the newly cited documents, a rather short time and undoubtedly a shorter time than that which was allowed for replying to the statement of the grounds of appeal. The introduction of the new documents into the proceedings without adjourning oral proceedings would have been contrary to the principle of equal treatment of the parties. The board thus concluded that the documents, independently of their relevance, were not to be introduced into the proceedings.
1.2 Where there is abuse of procedure
In T 1757/06 the opponent (Dow Chemical Company of Midland) submitted a patent publication filed by Dow Italia of Milan two months before the oral proceedings before the board of appeal. The board held that the opponent and the applicant were separate corporate entities, but nevertheless it would be expected that companies of the same commercial group would have knowledge of their own patent documents. Normally the attempt of a party to file at a late stage one of its own publications will fail, as this is considered to be an abuse of procedure. Although in this case the board did not find that there had been an abuse, it pointed out that the filing at a very late stage of a document that the opponent should have been aware of from the outset of the proceedings could not be condoned.
2. Withdrawal of opposition during opposition proceedings
In T 562/06 the board observed that a patent proprietor, following withdrawal of an opposition, had to reckon with the opposition division exercising its right under Rule 60(2) EPC 1973 (Rule 84(2) EPC) to continue the opposition proceedings on its own motion. No separate notification of that decision to the remaining parties was prescribed. Therefore, in the case at hand too, the appellant could not have been surprised by the continuation of the opposition proceedings. It had been free to request oral proceedings if it had considered them necessary. Objectively speaking, withdrawal of the opposition had no bearing on whether to file such a request, and in that respect had not changed the situation in any way. So non-notification of the decision to continue proceedings could not be regarded as a substantial procedural violation.
3. Intervention
In the case before the board in T 305/08, the appellant (opponent I) had filed an appeal against the decision of the opposition division to reject the opposition. Two separate interventions were subsequently filed (by opponents II and III), both of which also raised fresh grounds of opposition under Article 100(c) EPC 1973.
The respondent argued that both opponents II and III were not a 'third party' in accordance with Article 105(1) EPC, as they belonged to the same group of companies as the appellant and could therefore not be seen as independent. The board disagreed. The term 'any third party' in Article 105(1) EPC could not be given an interpretation other than that each party had to be a separate legal entity, which they were. Nor was allowing the interventions tantamount to allowing the appellant to late-file oppositions via opponents II and III under its control and thus introduce new evidence. Referring to G 1/94, the board agreed that preventing an intervener from attacking a patent using all available means, including raising new grounds of opposition under Article 105 EPC, would run contrary to the purpose of intervention. The wording of Article 105 EPC was quite clear in allowing 'any third party' to file an intervention; it was not restricted to any third party who had not had a chance to file an opposition. Finally, the interventions did not have the character of straw man oppositions in accordance with G 3/97 (OJ EPO 1999, 245), which, in any case, had found oppositions filed by a straw man on behalf of a third party acceptable. There was no circumvention of the law, as the respondent had commenced infringement proceedings against opponents II and III. The interventions were therefore admissible.
4.1 The legal position of the third party
The board in T 390/07 pointed out that a third party within the meaning of Article 115 EPC is not a party to proceedings and has no more than an opportunity to "present observations". While it is well-established by case law that third-party observations can be considered, both at first instance and on appeal, there is no obligation on the board beyond such consideration and no right of a third party to be heard on the admissibility of its observations and of any evidence in support of observations. While, of course, the actual parties to proceedings have the right to be heard in relation to such observations if they might (in whole or in part) form the basis of a decision, that right arises quite independently under Article 113(1) EPC. Thus, the admissibility of third-party observations is entirely a matter for the board.
5. Transfer of party status
5.1 Party status as opponent
5.1.1 Legally valid transfer
In T 384/08 the board started from the premise that an opponent status may be transferred or assigned to a third party as part of the opponent's business assets, together with the assets in the interests of which the opposition was filed (see G 4/88, OJ EPO 1989, 480). In this context, the term "business" has to be understood in a broad sense as describing an economic activity which is or could be carried on by the opponent and which constitutes a specific part of his business assets. In the case at issue, the term "business" also encompassed the opponent's core activity of scientific research and development activities (R&D) in the field of micro-arrays. Such a business exists and is transferable even if the firm has closed its day-to-day operations and is going to be dissolved in view of financial difficulties. While in such circumstances one may possibly speak of a business "in a frozen state" or a "residual" business, a firm has still a business as long as there are business assets which allow the carrying out of its core activities connected with them. The fact that many tangible assets (excluding patent portfolio and laboratory equipment necessary for the business activities) have been sold off in an auction in order for the company to become a more attractive takeover or merger candidate, does not result in a transfer of business.
Moreover, the board had to ascertain whether an asset purchase agreement signed between the original opponent as seller and the buying firm established a valid business (and opponent status) transfer. The board concluded that that was the case. The mere fact that certain assets (here contractual employment arrangements, cash, marketable securities, accounts receivable) had been explicitly excluded from the agreement was as such not sufficient to conclude that the contract did not result in the transfer of business; the excluded assets were of no importance for continuing the micro-array business and what remained of the original opponent afterwards was an empty shell.
5.1.2 Consequences of an invalid transfer for the admissibility of appeal
In T 1081/06 it was not disputed that the transfer of opponent status was invalid. Instead a dispute arose between the parties regarding the consequences of this invalid transfer for the admissibility of the appeal. In this respect, the board followed the cited decision T 1178/04 in which, during the opposition proceedings, a transfer of opponent status took place which, although initially admitted by the opposition division, was later found invalid by the board. Regarding the question of admissibility of the appeal, the board in T 1178/04 had held that a person was a party for that purpose even if the entitlement to take part in proceedings before the EPO was brought into question and such entitlement was the subject-matter of a pending decision; although that person might have ceased to be a party if it were decided that he was not entitled to take part in the proceedings, that did not mean that he had never been a party, only that he was no longer entitled to take part. The board in T 1081/06 concurred with the view that the status could not change retrospectively from that of being a party to that of never having been a party. Accordingly, the finding of the current board that the ruling of the opposition division was incorrect did not prevent the opponent from having been a party at the date it filed its notice of appeal.
6. Apportionment of costs - failure of a party to appear at the oral proceedings
According to T 1079/07, to inform the EPO and any other party to the proceedings in due time before the scheduled date of an intention not to attend oral proceedings is a matter of courtesy and respect rather than a procedural obligation to be met. In order to hold that a late announcement of an intended absence to oral proceedings constitutes a "culpable action of an irresponsible or even malicious nature" (see T 937/04) strong supporting evidence for such an allegation would be required.
According to the case law of the boards of appeal, the non-appearance of a party generally does not adversely affect the party which did attend. A different apportionment of costs cannot be ordered if the parties which are affected have neither shown nor claimed that they incurred additional costs because the appellants were not present.
The same view was taken by the board in T 190/06, in which the appellant (patent proprietor) notified four days before the oral proceedings that it would probably be unable to attend. It thus remained unclear whether it would actually appear. Such uncertainty was inherently undesirable, but whether it justified an order to pay costs would depend on the circumstances of the case. In the present one at least, the circumstances did not justify a different apportionment of costs. The appellant/opponent had failed to persuade the board that it had actually incurred additional costs as a result of the appellant's (patent proprietor's) failure to appear. That would only have been the case if, knowing that the other party would not be attending, it too had not turned up. Such a hypothetical situation could only be assessed retrospectively in the light of factual submissions. The appellant (opponent) had argued that the oral proceedings had become redundant, but this was not persuasive. The board's communication had shown that it took the provisional view that the subject-matter claimed in the main request was not novel, but whether the subject-matter claimed in the auxiliary requests involved an inventive step had been left open. So the appellant/opponent could not assume that the board would find in its favour solely on the basis of its written pleadings.
In T 273/07 the appellant (opponent) requested a different apportionment of costs because the respondent (patentee) did not appear at the oral proceedings and gave notice of its non-attendance by telephone only late in the afternoon on the day before the appointed date. In such cases, a different apportionment of costs can be ordered only if the absence of the party rendered the oral proceedings unnecessary. In the present case, the appellant itself had requested oral proceedings "in the event that the board of appeal does not intend to revoke the patent in its entirety based on the written procedure". This request was an unconditional request which did not depend on the presence of the other party at the oral proceedings. The board summoned the parties to oral proceedings and made clear in its communication that its preliminary opinion was in favour of the respondent. The oral proceedings were therefore to be held in accordance with the request of the appellant and independently of the question of the presence of the respondent.
In the same context, the fact that a party decides to be represented at the oral proceedings by more than one representative and/or by accompanying persons whatever tasks they have to fulfil (consultants, experts, observers etc.) is a unilateral decision by the party concerned. The other party cannot be held responsible for this decision. A different apportionment can only be ordered if the costs were incurred because the other party was absent, i.e. because the oral proceedings were not necessary - this was not the case here. The request for an apportionment of costs was therefore rejected.
D. Opposition procedure
1. Admissibility of the opposition
1.1 Formal requirements of opposition
Questioning the identity of an opponent is not enough to render the opposition inadmissible; to achieve that, cogent evidence must be put forward. In T 4/05, no such case was made. The appellant had not filed the extract from the commercial register which, according to its submissions during oral proceedings before the board, showed a different company name. This could therefore not be cited as evidence that the opponent's identity was unclear – as indeed the appellant acknowledged at the oral proceedings. The appellant's objection that two other companies were trading at the same address as the opponent also failed; this was merely an observation which could not affect the party status of an opponent who had been unambiguously identified.
In T 1632/06 the appellant deemed the opposition to be inadmissible as it had not been signed in the name of the opponent, and as the address of the opponent contained a wrong postal code. It argued that these were not deficiencies under Article 99(1), Rule 1(1) and Rule 55(c) EPC 1973, so that Rule 56(1) EPC 1973 did not apply to the case at issue. According to the board, Rule 56(2) EPC 1973 stated that an opposition was also inadmissible if it did not comply with other provisions of the EPC and the opponent had not remedied the respective deficiency within the time limit set by the opposition division. The aforementioned deficiencies of the opposition might be subsumed under Rule 55(a) EPC 1973 (as to the address of the opponent) and Rule 36(3) EPC 1973 (as to the signature). Consequently, Rule 56(2) EPC 1973 applies to these deficiencies. Hence, the opposition division had to set a time limit to remedy these deficiencies. Consequently, it also had the power to extend this time limit or to set a new time limit whenever this was deemed appropriate.
1.2 Substantiation of the opposition
According to the established case law, the indication of facts, evidence and arguments need not be conclusive or correct. That is an issue of merit. The board, however, emphasized in T 1194/07 that the merits of a case can only be assessed in a meaningful manner if the case has been stated fully, by an adequate indication of the relevant facts, evidence and arguments. In the case at hand, the board concluded that the notice of opposition did not include "an indication of facts and evidence" as required by Rule 55(c) EPC 1973 (now Rule 76(c) EPC) to support the grounds raised. Key elements linking the cited prior art to the claim or relating to their validity as evidence, as well as crucial arguments informing the reader why the skilled person might have considered combining the features of such prior art with those of the accompanying evidence, were missing in the notice. It required some level of investigative effort on the reader, who now carried the burden of identifying the documents' relevant passages, if any, and establishing the exact correspondence with the claim features and why. Moreover, a key element was missing in the notice's chain of logic leading from the prior art to the invention: it is not apparent to the reader from the notice why the skilled person would combine their teachings.
The net result of the omission of key facts and elements in the notice's reasoning was that it amounted to little more than speculation or an outline of a possible case against the patent. To determine whether or not a case in fact existed that might prejudice the patent, the reader must first fill in the substantial gaps. He would need to find the relevant features in the citations and carry out the missing technical evaluation himself. The burden of proof would thus have been shifted away from the party contesting the validity of the patent.
In T 1074/05, opposition was filed against the patent as a whole, citing the grounds under Article 100(a) and (b) EPC 1973, i.e. lack of novelty and inventive step and insufficiency of disclosure. In the contested decision, the opposition division had found, in essence, that the opposition was admissible; it was adequately substantiated given the straightforward nature of the technical issues. Important to the board was the opponent's argument in the notice of opposition that the patent's subject-matter was obvious, being a combination of known elements, or else (assuming that the issues were more complex) insufficiently disclosed due to a lack of technical details. The board felt that this argument – even if the skilled person was drawing on common general knowledge – might not be convincing as regards lack of inventive step, but even so it amounted to reasoning which could be properly understood by both the opposition division and the patent proprietor. Therefore, the notice of opposition adequately set out the facts and evidence presented in support of the particular ground of lack of inventive step. The opposition is sufficiently substantiated and thus admissible if one of the grounds for opposition meets the requirements of Rule 55(c) EPC 1973.
2. Substantive examination of the opposition - fresh grounds
In T 597/07 the opponent had based the opposition on the grounds of lack of novelty and inventive step. In support of these grounds, two documents were indicated and the opposition encompassed the reasons why the claimed subject-matter was held to lack novelty. On appeal, the appellant (opponent) submitted that the claimed subject-matter was neither novel or inventive whereas the respondent (patentee) argued that any objection under Article 56 EPC would constitute an inadmissible new ground of opposition since it had not been substantiated in the notice of opposition.
By referring to G 1/95 (OJ EPO 1996, 615), the board concluded that if a patent had been opposed on the grounds of lack of novelty and lack of inventive step and if only the ground of novelty had been substantiated, a specific substantiation of the ground of lack of inventive step was not necessary. The board further concurred with the conclusion drawn in T 131/01 (OJ EPO 2003, 115) that under such circumstances a specific substantiation of the ground of lack of inventive step is not even generally possible since - given that novelty, i.e. the presence of a difference between the claimed subject-matter and a prior art, is a prerequisite for determining whether an invention involves an inventive step in view of that prior art - this would contradict the reasons in support of lack of novelty. Therefore, the board held that the objection of lack of inventive step was not a fresh ground for opposition in the case before it.
3. Substantive examination of amendments
In T 656/07 the lack of clarity arose - at least in part - from the amendments that had been carried out after grant of the patent. The board held that this lack of clarity could be objected to in opposition proceedings because it was generated by the amendments made during this procedure, even if the contested feature as such was already present in the claims as granted but in another combination. It was not enough to state that a feature was present in the granted version in order to limit the power of investigation of the board as far as clarity objections arising from an amendment was concerned. It was also necessary to ascertain the effect produced by the amendments introduced into the claim as a whole since a feature of a claim was not to be seen in isolation, but through its interaction with the other features of the claimed combination.
In the opinion of the board it could not be stated that there was a general rule in the jurisprudence that a combination of granted claims should not be challenged for lack of clarity. Whenever amendments were requested by a patentee in the course of opposition proceedings, Article 101(3)(a) EPC conferred upon both the opposition division and the boards of appeal jurisdiction and thus the power to apply the whole of the EPC, including Article 84 EPC.
E. Appeal procedure
1. Transitional provisions - general principles
The board in T 193/06 found that situations arose where the transitional provisions stipulated the application of an amended article of the revised EPC which in turn required or implied the application of an unamended article, i.e. an article which had not been subject to amendment under Article 1 of the Act revising the EPC of 29 November 2000. The board took the view that the transitional provisions did not exclude the application of the relevant provisions of the revised EPC in respect of the unamended article and, likewise, any Implementing Regulations associated with said unamended article, in particular where no adverse legal consequences for the appellant ensued from such an application of the provisions of the revised EPC.
2. Devolutive effect of the appeal
According to T 1382/08, the devolutive effect of an appeal before a board extends only to that part of the impugned decision which is indicated in the statement of grounds for appeal and actually challenged by the appeal. For the board, therefore, the extent to which the impugned decision is to be amended, as defined under Rule 99(2) EPC, is simultaneously the limit of the devolutive effect. This in turn implies that part of the impugned decision not covered by the statement of grounds of appeal also cannot be part of the appeal proceedings and consequently becomes final on expiry of the time limit for appeal.
3. Binding effect of requests - no reformatio in peius
3.1 General issues
According to T 1194/06, there is no reason to assume that the Enlarged Board of Appeal in G 1/99 (OJ EPO 2001, 381) considered even a substantial limitation of the scope of protection unacceptable. Nor did G 1/99 distinguish between different "types" of unallowable amendment. The board could thus see no reason to assume that an amendment concerning an unallowable disclaimer should be treated in any way differently from other unallowable amendments, even if the question of what was considered to be an unallowable disclaimer was clarified after the decision G 1/99.
The board in T 659/07 found that the applicability of the legal principle of the prohibition of reformatio in peius depends on the procedural status of a case, which had therefore to be examined prior to the substantive merits of a request. Where the patentee is the sole appellant, the board further held that the patent as maintained by the opposition division in its interlocutory decisions, cannot be objected to by the board, either at the request of the respondent/opponent or ex officio, even if the patent as maintained would otherwise have to be revoked on the ground that a feature present in both claim 1 as granted and as maintained introduces added subject-matter contrary to Article 123(2) EPC 1973.
The appellant/proprietor in T 384/08 took the view that the board was precluded from examining the transfer of opponent status, since the transfer had not been accepted by the opposition division and neither possible opponent (transferor or transferee) had appealed the decision - the issue thus remained finally determined and could not be decided differently without infringing the principle of prohibition of reformatio in peius.
The board disagreed. The doctrine of reformatio in peius does not apply separately to each point or issue decided, or to the reasoning leading to the impugned decision. On numerous occasions, the boards have held that the admissibility of the opposition is an indispensable procedural requirement for the substantive examination of the opposition submissions at every stage of the proceedings (referring to T 1178/04). The approach adopted in T 898/91 resulted in an exception to these general principles. If this approach were to be followed, a distinction with respect to the binding effect of findings of the department of first instance would have to be made between a situation where the admissibility of an opposition was accepted by the opposition division and a situation where it was not accepted. The board had difficulties in finding a legal justification for such a distinction. The board therefore concluded that, notwithstanding the fact that neither possible opponent had appealed the opposition division's decision, it had to examine the question of the transfer of status of the opponent ex officio before dealing with the substance of the case.
4. Filing and admissibility of the appeal
4.1 Interlocutory decisions
In T 857/06 the opposition division had attempted to incorporate the content of its first (non-appealable) interlocutory decision into its second (appealable) interlocutory decision. The board pointed out that matter already decided cannot be decided again at the same instance and so the appellant had to appeal not only the second, but also the first interlocutory decision. Although the first interlocutory decision was not explicitly appealed, the attempt by the opposition division to incorporate its first decision was procedurally incorrect and misleading. The board concluded that, according to the principle of legitimate expectations, the appeal had to be considered as encompassing the first interlocutory decision.
4.2 Board competent to hear case
A board has no appellate competence, in inter partes opposition appeal proceedings, to review the decision on correction of the grant decision taken in ex parte examination proceedings under Rule 89 EPC 1973, since that decision does not form the subject of the appeal proceedings before it; see T 79/07, deviating from T 268/02.
According to T 1382/08, as regards the question of responsibility under Article 21(3) EPC 1973, if the impugned decision is contradictory or unclear it is to be seen in the light of the legal consequences noted vis-à-vis the applicant or the impression given to the public as to its legal nature.
4.3 Form and time limit of appeal
4.3.1 Electronic filing of appeal
According to the Decision of the President of the European Patent Office dated 26 February 2009 concerning the electronic filing of documents, (OJ EPO 2009, 182) ("the 2009 Decision"), documents in proceedings under the EPC may now be filed with the EPO in electronic form as from 5. March 2009.
The board in T 1090/08 granted re-establishment of rights to an appellant in a decision dated subsequent to the entry into of force of the 2009 Decision, where the appellant had filed the statement of grounds of appeal via epoline® prior to the entry into force of the 2009 Decision and therefore inadmissibly.
In T 1427/09 the notice of appeal and statement of grounds were filed in due time but the electronic signatures were not issued to a person authorised to act in the proceedings, in contravention of Article 8(2) of the 2009 Decision, which is silent on the legal consequences of non-compliance. The board held that the principle that the signature of an unauthorised person should be treated like a missing signature, as set out in T 665/89, should apply not only to handwritten signatures, but also to electronic signatures. The electronic filing of a document in appeal proceedings accompanied by the electronic signature of an unauthorised person should therefore be treated under Rule 50(3) EPC like the filing of an unsigned document per mail or telefax in the same proceedings.
4.3.2 Form and content of notice of appeal
(a) Rule 99(3) EPC
According to the board in T 358/08, Rule 99 EPC has not altered the previous law as to the requirements of either the notice of appeal or the statement of the grounds of appeal as regards the appellant's requests. Rule 99(1)(c) EPC is satisfied if the notice of appeal contains a request, which may be implicit, to set aside the decision in whole or, (where appropriate) only as to part. Such a request has the effect of "defining the subject of the appeal" within the meaning of Rule 99(1)(c) EPC. Nor is it necessary in the case of an appeal by an applicant or proprietor for the notice of appeal to contain a request for maintenance of the patent in any particular form. This is something which relates to "the extent to which [the decision] is to be amended", and which is therefore a matter for the statement of grounds of appeal under Rule 99(2) EPC. This was confirmed in T 509/07.
Rules 99(3) and 41(2)(h) EPC together make it clear that a notice of appeal must be signed by the appellant or his representative, but not that every single document in the notice has to be signed or that the signature has to be appended at a particular place or page. In the case in point, the debit order had been part of the notice of appeal, so the board held that the signature on it fulfilled the EPC requirements in question. The appeal in case T 783/08 had therefore been validly filed.
4.4 Statement of grounds of appeal
4.4.1 General principles
Following T 382/96 and T 774/97, where it was held that the admissibility of an appeal can only be assessed as a whole and that there is no support in the EPC for a notion of "partial admissibility" of an appeal, the board in T 509/07 found it immaterial for the purposes of the admissibility of the appeal whether or not sufficient grounds relating to the main request had been submitted, where the first auxiliary request clearly complied with the admissibility requirements of Article 108, third sentence, EPC - where these requirements are fulfilled at least in respect of one request, the appeal as a whole will be admissible. However, it is a different question whether a request in relation to which the admissibility requirements of Article 108, third sentence, EPC are not met is admitted into the appeal proceedings. The board did not admit these unsubstantiated requests. See also T 1763/06.
In T 760/08 the statement of grounds for appeal was not only very brief but also contained contradictions and inaccuracies, leaving it up to the board to make sense of it. Such an appeal, the board ruled, was inadmissible. In line with the case law, a statement of grounds could be regarded as sufficient if a new fact was submitted which deprived the decision of its legal basis. Either the appellant challenged the opposition division's decision – in which case it had to make a convincing case against all the reasons for the decision – or it submitted amended sets of claims which it thought would rectify the deficiencies set out in that decision. In the latter case, it was not enough merely to submit a new set of claims without any comments.
5. Parallel proceedings
The board in T 18/09 stressed that, in the case of parallel proceedings before a national court and the boards of appeal, parties should inform both tribunals of the position as early as possible and ask the appropriate tribunal for acceleration in order to avoid duplication of proceedings. Whether acceleration is requested by one party, or both or all parties in agreement, or by a national court, all parties must accept a strict procedural framework including short time limits. It must also be understood that acceleration can have no effect on the equal treatment of all parties and cannot confer any advantage on any one party.
6. Remittal to the department of first instance
6.1 Remittal following filing or late submission of relevant new document
6.1.1 General
In T 1913/06 documents filed with the opponent/appellant's grounds of appeal were admitted into the proceedings and the respondent's request for remittal refused, taking into consideration the imperative of procedural efficiency and the public interest in a streamlined and efficient procedure. The patent was revoked on the basis of the admitted documents (see also T 1007/05). The board made it clear that a case should not be remitted to the department of first instance for consideration of submissions made at the oral proceedings which the board or the other party could not reasonably be expected to deal with without adjournment of the oral proceedings and which had not been admitted under Article 13(3) RPBA.
In T 1077/06 the appellants, who had alleged violation of their right to be heard before the first instance, did not attend the oral proceedings before the board. Despite being invited to do so by the respondent, the board could not identify a legal basis in the EPC from which it could be concluded that a party, appealing against a decision of a department of first instance, which had been taken in violation of its right to be heard, had retrospectively abandoned its right to be heard before the department of first instance when it did not appear at oral proceedings before the department of second instance. The case was remitted to the department of first instance.
7. Binding effect
7.1 General principles
Subject matter on which a final decision has been taken by a board of appeal in the parent application becomes res judicata and cannot be pursued in the divisional application. If the statement setting out the grounds of appeal in a case does not go beyond submitting and arguing for a set of claims which constitutes such subject-matter, the appeal is not sufficiently substantiated (T 51/08).
8. Interlocutory revision
8.1 Substantial procedural violation
Where the examining division decides not to rectify its decision before receiving the statement of grounds of appeal and before the time limit for filing it has expired, this constitutes a procedural violation (T 1891/07, confirming T 41/97). Reimbursement of the appeal fee was not ordered, as the violation could not have been causative in filing the appeal, since it occurred after the notice of appeal had been filed.
9. Referral to the Enlarged Board of Appeal
9.1 Ensuring uniform application of the law
In a referral under Article 112(1)(b) EPC, the President of the EPO asked the Enlarged Board of Appeal to consider a set of questions concerning the patentability of programs for computers on which she deemed the boards of appeal to have given different decisions and which she held to be of fundamental importance within the meaning of Article 112(1) EPC. In G 3/08 (OJ EPO 2011, ***), the Enlarged Board of Appeal rejected this referral as inadmissible on the grounds that the decisions cited did not in fact diverge and set out guidance for referrals by the President under Article 112(1)(b) EPC:
In exercising his or her right of referral a President of the EPO is entitled to make full use of the discretion granted by Article 112 (1)(b) EPC, even if his or her appreciation of the need for a referral has changed after a relatively short time.
Different decisions by a single technical board of appeal in differing compositions may be the basis of an admissible referral by the President of the EPO of a point of law to the Enlarged Board of Appeal pursuant to Article 112(1)(b) EPC.
As the wording of Article 112(1)(b) EPC is not clear with respect to the meaning of "different/abweichende/divergent" decisions the provision has to be interpreted in the light of its object and purpose according to Article 31 of the Vienna Convention on the Law of Treaties. The purpose of the referral right under 112(1)(b) EPC is to establish uniformity of law within the European patent system. Having regard to this purpose of the presidential right to refer legal questions to the Enlarged Board of Appeal, the notion "different decisions" has to be understood restrictively in the sense of "conflicting decisions".
The notion of legal development is an additional factor which must be carefully considered when interpreting the notion of "different decision" in Article 112(1)(b) EPC. Development of the law is an essential aspect of its application, whatever method of interpretation is applied, and is therefore inherent in all judicial activity. Consequently, legal development as such cannot on its own form the basis for a referral, only because case law in new legal and/or technical fields does not always develop in a linear fashion, and earlier approaches may be abandoned or modified.
Legal rulings are characterised not by their verdicts, but by their grounds. The Enlarged Board of Appeal may thus take obiter dicta into account in examining whether two decisions satisfy the requirements of Article 112(1)(b) EPC.
See also Chapter I.A.1.1, computer-implemented inventions.
10. Petition for review
10.1 General
In R 12/09 of 3.12.2009, the request to exclude members of the Enlarged Board of Appeal under Article 24 EPC was rejected as inadmissible - the members were alleged necessarily to have a personal interest due to their capacity as members of a technical board or the Legal Board of Appeal such that the suspicion of partiality necessarily arose.
10.2 Obligation to raise objections in accordance with Rule 106 EPC
In R 4/08 the Enlarged Board of Appeal made it clear that raising an objection pursuant to Rule 106 EPC is a procedural act and, except where such objection could not be raised during the appeal proceedings, a precondition for access to an extraordinary legal remedy against final decisions of the boards of appeal. Its validity depends upon compliance with two criteria; firstly, that the objection is expressed in such a form that the board of appeal is able to recognise immediately and without doubt that an objection pursuant to Rule 106 EPC is intended; and, secondly, the objection must be specific, that is indicate unambiguously which particular defect of those listed in Article 112a(2)(a) to (c) and Rule 104 EPC it intends to rely on. Only if a party's statement complies, both as to form and content, with these criteria does it qualify as an objection pursuant to Rule 106 EPC. Referring to R 4/08, the Enlarged Board in R 7/08 found the petition clearly inadmissible, as the petitioner had failed to raise a procedural objection to the introduction of allegedly new aspects of insufficiency of disclosure at the oral proceedings and to the board's refusal to admit two documents.
In R 8/08, too, the Enlarged Board stressed that an objection under Rule 106 EPC must be expressly described as such, and cannot be formulated prematurely and without specifying the alleged fundamental procedural defect within the meaning of Article 112a EPC.
In R 9/08 the petitioner contended that the written reasons of the decision for revocation of the patent were based on the consideration of a document which had never been introduced into the proceedings and had never been discussed in these proceedings. On this assumption the exceptional condition of Rule 106 EPC was fulfilled.
The Enlarged Board found in R 6/09 that the petitioner could have raised an objection in respect of the alleged procedural defect during the appeal proceedings. However, at the oral proceedings before the Enlarged Board, the petitioner's representative confirmed that no express objection had been made. The petition would thereby have been clearly inadmissible had it not been inadmissible for other reasons.
10.3 Procedure in dealing with petitions for review in accordance with Rule 109 EPC
In R 3/09 the petitioner was not claiming that the board had taken its decision on the basis of a text not agreed by the appellant – which would have been a clear direct breach of Article 113(2) EPC – but that it had given it a "distorted" meaning. The Enlarged Board stated that discrepancies between a board's provisional opinion as expressed in a communication preparing oral proceedings and its analysis in its final decision did not constitute a fundamental procedural defect in the absence of other verifiable circumstances showing that it was impossible for the parties to comment on the points mentioned as requiring discussion. The allegation of "distortion" was in fact a criticism that the decision's reasoning was unsound. But that would mean scrutinising the decision's application of substantive law – which went beyond the Enlarged Board's remit in review proceedings.
10.4 Fundamental violation of Article 113 EPC
The first alleged fundamental procedural defect before the Enlarged Board in R 11/08 was that the board of appeal allowed no opportunity to discuss the petitioners' auxiliary requests or their general request that the patent be maintained based on at least one of the claims of any of the auxiliary requests, thus denying the petitioners the right to be heard contrary to Article 113 EPC. The Enlarged Board found that this did not in fact happen. All of the auxiliary requests contained an unallowable "buzzer" claim, which was in fact discussed at the oral proceedings. It was established practice that if, as apparently happened in this case, a board of appeal considered that a claim common to two or more requests was unallowable, all those requests failed at that point.
The second alleged fundamental procedural defect was that no decision had been taken on the general request. Again, the Enlarged Board found that this was not the case. It was clear that at the start of the oral proceedings the board of appeal had stated that the general request was unclear and that it was not in a position to give an indication as to what might be appropriate or acceptable. The board of appeal would not accept requests which were not specific and which were not on the table, which clearly included any possible requests the petitioners might have envisaged by the general request, and offered them a chance (which they declined) to file specific requests.
In the case before the Enlarged Board in R 7/09, the petition was allowed as the EPO was not able to establish delivery of the opponent's (appellant's) statement of grounds of appeal to the respondent (patentee and subsequent petitioner). The petitioner had therefore been unaware of the grounds on which the decision of the board of appeal revoking his patent was based and a fundamental violation of Article 113(1) EPC had occurred. The fact that the statement of grounds became readily available to the public and, thus, also to the petitioner by way of electronic file inspection had no bearing on the right of parties to proceedings before the EPO, including appeal proceedings, to be individually and specifically informed by the Office as prescribed in the EPC. The parties had to be able to rely on the Office complying with the relevant provisions of the EPC and, at least for the purposes of Article 113(1) EPC, they and their representatives had no duty to monitor the proceedings themselves by regularly inspecting the electronic file.
The petitioner in R 8/09 contended that its right to be heard had been violated and that the decision had taken it by surprise. He alleged that the board used the document produced by him in an improper way and drew wrong information from it; this could have been avoided if the petitioner had known that the document would be regarded as experimental evidence and been allowed to make the appropriate more detailed arguments. However, according to the Enlarged Board of Appeal, the fact that the patentee considered the document to be a crucial document was already clear from its grounds of appeal. Because the change of the label put on the document did not change the discussion to be held on it, the petitioner also could not rely on T 18/81, where the right to be heard was deemed not to have been observed when a decision to refuse an application was based essentially on documents which, though supplied by the appellant in support of his case, were used against him to produce an effect on which he did not have an opportunity to make observations.
Insofar as the submissions of the petitioner could be understood as challenging the correctness of the decision of the board of appeal in its interpretation of the document and in maintaining the patent in amended form as a consequence of that interpretation, such a review would concern the question of the correct application of substantive law and was thus outside the scope of proceedings under Article 112a EPC.
In R 13/09 the petitioner alleged that one of his main arguments regarding the inventive step of the subject-matter of the contested patent was rebutted using a ground which he had not been able to comment on. Following R 1/08, the Enlarged Board of Appeal found that a petitioner, to succeed with this objection, had to establish (a) that the contested decision was based on an assessment or on reasoning relating to grounds or evidence which the petitioner was not aware of and had no opportunity to comment upon and (b) that a causal link existed between this procedural defect and the final decision, otherwise the alleged defect could not be considered decisive and hence not fundamental. Further, the EPC does not require that a board of appeal must provide a party with all foreseeable arguments in favour of or against a request in advance. Nor is the petition for review a means to review the application of substantive law. A review of the application of substantive law would mean adding a third instance to the procedure before the EPO.
On the facts of the case, the conclusion reached by the board in the objected part of the decision under review was based on a fact - the formulation of the problem - which the parties must have been aware of. There had thus not been a violation of Article 113 EPC.
10.5 Any other procedural defect
The Enlarged Board of Appeal confirmed in R 11/08 that a board of appeal may reject a request for lack of specific definition and for being conditional upon the board assisting the party.
11 Filing of amended claims in appeal proceedings
11.1 Requests not examined by the opposition division
In T 356/08 the appellant had defended its patent in opposition proceedings with sets of claims each containing only one or two independent claims. On appeal, it then deployed sets containing four and three independent claims. The board found that the new requests raised new questions which had not been examined by the opposition division. And they could also have been submitted to the department of first instance. In principle, boards of appeal should be giving their decisions on the basis of facts submitted to the first instance; that did not preclude the admission of new arguments, but only if certain conditions were met. Appeal proceedings were not about bringing an entirely fresh case. Under Article 12(4) RPBA, boards had discretion over admitting requests which could have already been put forward in first-instance proceedings. The board found that it was in the public and the parties' interest to avoid piecemeal submissions generating repeated new counter-submissions; only then could opposition proceedings be dealt with expeditiously. It cited T 840/93 (OJ EPO 1996, 335), according to which the only justification for admitting late-filed requests was that the patentee would otherwise be deprived of any opportunity of still obtaining a patent. Where the "last-chance" argument did not apply, the board had to confine itself to its appellate role and decide only on requests which had already been considered by the opposition division. The board found that, on account of the prohibition of reformatio in peius, the argument that it was the "last chance" to still get a patent was not valid in the case at hand: where the patent proprietor was the sole appellant, neither the board nor the respondent could call into question the patent as maintained in limited form in accordance with the contested interlocutory decision (G 9/92 and G 4/93, OJ EPO 1994, 875). The board therefore had to confine itself to acting as an appellate body and rule only on the requests already examined by the opposition division.
In T 390/07 the request at issue was not a new request but one which had been before the opposition division and on which no decision had been taken as it was withdrawn because the opposition division expressed the opinion that the claim would not be allowable under Article 83 EPC. The board held that the purpose of an appeal is to review what has been decided at first instance (and, by necessary corollary, not to review what has not been decided, see T 528/93). The only basis on which a request withdrawn at first instance may be admitted on appeal is that, as in the case of any other request filed on appeal, it may overcome the reasons for the decision actually given on another request. The claim request which was replaced by another request in proceedings before the opposition division because it was manifest that it would fail, thereby avoiding a formal decision, and which was filed on appeal, was considered inadmissible by the board.
11.2 Filing of requests during the oral proceedings
Under Article 13(3) RPBA 2007, amendments made after oral proceedings have been arranged cannot be admitted if they raise issues which the board or the other party or parties cannot reasonably be expected to address without an adjournment of the oral proceedings.
In ex parte case T 979/07, the board said it could not admit late-filed claim 1, presented only at the start of oral proceedings, because the amended claim related to subject-matter disclosed only in the application's description and not covered by the original search. So the oral proceedings would at least have to be postponed. The board said that admitting a set of claims filed only in oral proceedings and necessitating an additional search because it shifted the claimed invention to other technical matter would de facto give applicants in appeal proceedings carte blanche to get oral proceedings postponed or the whole examination procedure reopened. That would be at odds with the requisite procedural economy (see also T 407/05, T 1123/05 and T 764/07).
In T 1790/06 auxiliary requests 1 and 2 were both filed only in oral proceedings, although the facts had not changed before or during those proceedings. In exercising its discretion the board also took account of the conduct of the respondent (patentee) during the oral proceedings. A party's obligations included taking care not to act in a manner detrimental to the efficient conduct of oral proceedings. At such proceedings, it should not for example submit requests willy-nilly, withdraw them and then resubmit them later. That was unacceptable, for both the board and other parties. Specifically, considerations of procedural economy required that they be given reasonable time to consider any new requests filed, in particular without postponing the oral proceedings.
11.3 Late filing of dependent claims
In T 565/07 the appellant had filed multiple sets of claims ten days before oral proceedings. Claim 1 of the fourth auxiliary request contained claim 1 of the main request and, in addition, the features of a dependent claim. However, it went in a completely different direction from the second and third auxiliary requests. The board ruled that although patentees too should be able in principle, under Rule 80 EPC (2007), to limit a patent's subject-matter by including the features of a dependent claim in response to objections that the granted independent claim was not patentable, if they exercised that right repeatedly in a variety of directions – e.g. by filing requests in parallel or in sequence – the board would end up having to decide in which of several versions the patent was to be maintained. That would be at odds with Article 113(2) EPC, which required the board to decide upon "the text submitted to it … by the applicant". In other words, it was up to the patentee to decide the text for further prosecution and also one or more sets of claims which in any event had to be in line with that decision and thus its chosen direction of limitation – especially if, as in this case, the additional change of direction occurred only in an auxiliary request filed just ten days before oral proceedings.
12. Reimbursement of appeal fees
In T 1098/07 the appellant argued that the decision of the opposition division failed to mention or discuss in detail material and arguments submitted in the course of the opposition proceedings (especially drawing E1 and photograph E2). The board stated that failure to consider evidence will normally constitute a substantial procedural violation in that it deprives a party of basic rights enshrined in Articles 117(1) and 113(1) EPC. In the board's opinion, certain factors may nevertheless mitigate the severity of the violation. Thus, whether or not a failure of the decision to expressly mention material offered by a party in support of its case constitutes a substantial procedural violation will depend on the (prima facie) significance and evidential value of such material. Here the questions to be asked are: what facts is it intended to prove, how relevant is it to these facts and how likely is it that it will prove them?
In T 1382/08 the board held that the logical structure of a decision under appeal implied that the order as such had to be clear and unambiguous. Disregarding this condition based on Rule 68(2) EPC 1973 was a substantial procedural violation justifying reimbursement of the appeal fee.
According to the board in T 1078/07, the examining division had been mistaken in saying, in its decision refusing the application, that the requests filed by the appellant (claims 1 to 5 according to the main request and two auxiliary requests) were identical. That had been an error of judgement, but not tantamount to a substantial procedural violation, and only the latter would justify remittal to the first instance under Article 11 RPBA.
VIII. THE EPO ACTING AS A PCT AUTHORITY
1. Language of the proceedings
In J 8/07 (OJ EPO 2009, 216), an international patent application under the PCT had been filed and published in French. On entry into the European phase before the EPO, the applicant had attached an English translation of the international application, and requested that the language of the future proceedings be English.
If that request were refused, its auxiliary request was that the EPO should use English in all written proceedings and decisions. The first-instance department issued a decision refusing both requests. The applicant appealed against that decision.
The Legal Board of Appeal referred questions to the Enlarged Board of Appeal which the latter answered in case G 4/08. It ruled that if an international patent application has been filed and published under the PCT in an EPO official language it is not possible, on entry into the European phase, to file a translation of the application into one of the two others which would then become the language of the proceedings. Neither the EPC 1973 nor the EPC 2000 can be interpreted as allowing that. Nor is there any conflict between EPC and PCT provisions.
On the second question, the Enlarged Board decided that EPO departments cannot use, in written proceedings on a European patent application or an international application in the regional phase, an EPO official language other than the language of proceedings used for the application under Article 14(3) EPC.