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Supplements / Special editions
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Special edition No. 1

Pages 14-164

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Citation: Special edition No. 1, OJ EPO 2012, 14
Online publication date: 9.7.2012
BOARDS OF APPEAL
Information from the Boards of Appeal of the EPO

PART II - BOARD OF APPEAL AND ENLARGED BOARD OF APPEAL CASE LAW 2011

I. PATENTABILITY

A. Exceptions to patentability

1. Patentability of biological inventions

1.1 Plants and plant varieties

According to Article 53(b) EPC, patents shall not be granted in respect of plant varieties or essentially biological processes for the production of plants. This exclusion does not apply to microbiological processes or their products.

In T 1854/07, decided prior to decisions G 2/07 (OJ EPO 2012, 130) and G 1/08 (OJ EPO 2012, 206) of the Enlarged Board, the board considered the respondent's (patentee's) claims for sunflower seeds which were characterised by having a preferred fatty acid profile, mainly characterised by a high content of the desired oleic acid and a low content of the undesired palmitoleic acid. The board held that both the claims did not individually claim a plant variety even though they might embrace plant varieties. Therefore, following decision G 1/98 (OJ EPO 2000, 111), the subject-matter of these claims as well as that of some dependent claims was not excluded from patentability under Article 53(b) EPC.

The board disagreed with the appellant who had argued that decision G 1/98 was exclusively concerned with plant varieties as products of recombinant gene technology and was therefore not applicable to the case before the board. The claims in the case at issue, so the argument of the appellant, referred to plants (seeds) produced by classical plant breeding methods consisting of crossing and selection and were accordingly directed to plant varieties. The board emphasised that decision G 1/98 made it clear beyond doubt that whether or not a plant is considered to be a plant variety depends only on whether or not it meets the criteria set out in the definition in Rule 26(4) EPC. The method for its production, be it by recombinant gene technology or by a classical plant breeding process, is not relevant in answering this question.

In T 189/09, the board observed that, according to G 1/98 (OJ EPO 2000, 111), a plant defined by single recombinant DNA sequences is not an individual plant grouping to which an entire constitution can be attributed within the meaning of the EU Regulation on Community Plant Variety Rights. A plant defined in this way is not a concrete living being or grouping of concrete living beings but an abstract and open definition embracing an indefinite number of individual entities defined by a part of its genotype or by a property bestowed on it by that part.

In the case at hand, claim 1 was directed to a sugar beet plant which had been rendered glyphosate-tolerant by insertion of a CP4/EPSPS gene into its genome. It was characterised by at least one of three specific PCR amplification fragments encompassing either the whole or parts of the transgenic insert. In accordance with the ruling in G 1/98, the board concluded that it was not a plant variety, because the claimed plant was merely defined by single recombinant DNA sequences. Accordingly, the claimed subject-matter met the Article 53(b) EPC requirements.

2. Medical methods

According to Article 53(c) EPC, patents shall not be granted in respect of methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body.

2.1 Surgical methods

In its interlocutory decision T 992/03 of 20 October 2006 the board had referred questions to the Enlarged Board of Appeal which were answered in decision G 1/07 (OJ EPO 2011, 134). The first question was whether an imaging method for a diagnostic purpose which comprised or encompassed a step consisting in a physical intervention practised on the human or animal body is a surgical method.

In the resumed proceedings the board allowed in its decision T 992/03 of 4 November 2010 amendments to the claims so that claim 1 concerned a method for MR imaging the pulmonary and/or cardiac vasculature of a subject, using dissolved-phase polarized 129Xe gas. This method "comprises" the steps of exciting dissolved-phase polarized 129Xe gas with at least one large flip angle RF excitation pulse and then acquiring at least one MR image associated with the dissolved-phase polarized 129Xe gas. The board stated that whilst a skilled person would know that a MR imaging method was a rather complex procedure requiring inter alia preparatory steps like positioning of a subject in the MR system, delivering polarised 129Xe gas to the subject and initialising the MR system, these preparatory steps did not form part of the contribution of the invention to the art. Method claims 1 and 22 did not thus comprise "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" (G 1/07).

The fact that 129Xe can also be used as an anaesthetic was irrelevant for the issue of assessing whether the claimed methods should be excluded from patentability under Article 53(c) EPC. The Enlarged Board had clarified in G 1/07 that "there is an exclusion from patentability as a surgical method only if the health risk is associated with the mode of administration and not solely with the agent as such" and any anaesthetic effect of the 129Xe gas thus did not fall under the exclusion. It was also irrelevant whether the present claimed methods provided information allowing a surgeon to decide on the course of action to be taken during a surgical intervention.

The board concluded that the claimed methods did not relate to methods for treatment of the human or animal body by surgery falling under the prohibition of Article 53(c) EPC.

The question to be decided in T 663/02 was whether, in the context of claim 1 of the granted patent concerning a method of imaging an artery in a region of interest in a patient using magnetic resonance imaging and a magnetic resonance contrast agent, the step of "injecting the magnetic resonance contrast agent into a vein remote from the artery" had a surgical character. According to the granted patent, this step implied the placement of an intravenous catheter through which the contrast agent may then flow into the vascular system.

The board recalled that the Enlarged Board of Appeal explicitly held in G 1/07 (OJ EPO 2011, 134) that "any" narrower definition of treatment by surgery "must" cover the interventions which represent the "core of the medical profession's activities". The fact that an intravenous injection of a magnetic resonance contrast agent could be delegated by a physician to a qualified paramedical professional indicated that such an injection may be considered as representing a minor routine intervention which did not imply a substantial health risk when carried out with the required care and skill. Such acts would be ruled out from the scope of the application of the exclusion clause pursuant to Article 53(c) EPC following the narrow understanding advocated by the Enlarged Board of Appeal (G 1/04, OJ EPO 2006, 334, and G 1/07).

The board also analysed whether the method of intravenous injections involved a health risk. It held that a possible way of assessing health risks was to use a risk matrix making it possible to combine the levels of likelihood and health impact of a complication of a medical act with regard to a large number of patients, so as to obtain statistical health risk scores which may be used to decide what action should be taken. Such an assessment supported the view that an intravenous injection of a magnetic resonance contrast agent represented a minor routine intervention involving no substantial health risks when carried out with the required care and skill.

The board regarded an intravenous injection as an invasive intervention. However, the degree of invasiveness and the complexity might be considered low, at least with regard to injections into superficial arm or leg veins, as it was envisaged in the patent in suit.

In conclusion, the method according to the claims in question did not relate to a method for treatment of the human or animal body by surgery falling under the prohibition of Article 53(c) EPC.

In T 1075/06 the board held that venipuncture of blood donors and the extraction of blood from a donor's body represent substantial physical interventions on the body which require professional medical expertise to be carried out and which entail a substantial health risk even when carried out with the required professional care and expertise. A method claim comprising steps encompassing such procedures is a method for treatment of the human body by surgery which is excluded from patentability under Article 53(c) EPC.

The board distinguished its case from T 663/02, which concerned the intravenous injection of a contrast agent. The latter procedure was closely related to yet different from venipuncture which involved extracting large quantities of blood from a donor.

The claimed method furthermore comprised the step of returning processed blood, depleted of some of its components and charged with an anticoagulant, to a donor. In patients with pathologically elevated quantities or malignant properties of certain blood components, their removal by the claimed blood processing method and the return of the remaining components did have a therapeutic effect. Moreover, anticoagulants were medicaments and their administration to the donor via the return mode also resulted in a therapeutic effect on the donor's body, namely the reduction of blood clotting, thus preventing, for instance, deep vein thrombosis. The board pointed out that the term 'therapy' also covered prophylactic methods for treatment. It concluded that the claimed method was a method for treatment of the human body by therapy which was excluded from patentability under Article 53(c) EPC.

In T 836/08, claim 1 concerned a method for tracking the position of the distal end of a bone guide wire, using a medical optical tracking and navigation system. This method tracked optically, i.e. non-invasively, inter alia the position and alignment of the guide wire's proximal end and the alignment of the tubular canal in a bone in which the guide wire's distal end was located. The method was performed with the aid of reference apparatus. The board found that, while this meant that the reference apparatus had to be attached to, and the wire introduced into, the bone, these steps were not part of the claimed method. The claim neither contained nor covered a step of treatment of the body by surgery.

The fact that the method was performed after, or even during, a surgical intervention on the body did not mean that the claimed position-tracking method as such was a method of treatment by surgery. Rather, it was a purely "passive", non-invasive method of measurement and analysis which had no effect on the human body and the medical treatment administered.

The decision in T 923/08 concerned similar circumstances. It was apparent from the description that the claimed method was designed, among other things, to determine the change in the length of a femur where, for example, a damaged femoral head had been removed and replaced with an implant as part of a hip joint operation. The method made it possible to calculate how the operated femur had changed in length as compared with its pre-operation state, with a view to ensuring that the repaired hip joint differed as little as possible from a healthy joint. To carry out the method, it was essential that a reference system be attached, preferably directly, to a pelvic bone at an initial stage, i.e. before or at the start of the operation.

The board found as follows: where a method for determining measurements of the human or animal body necessarily entailed a surgical step consisting of fixing to the human or animal body a measuring device indispensable for performance of the method, that step had to be deemed an essential feature of the method which was covered by such a method, even if none of the claimed method features expressly related to this step. Such a method was excluded from patentability under Article 53(c) EPC.

The board also considered the decision in T 836/08, in which claim 1 had been directed to a method of determining the position of a bone guide wire's distal end, using a medical-technical optical tracking and navigation system. As in the case at hand, that method was performed using reference apparatus attached to the bone and at the proximal end of the wire. The board in T 836/08, however, had taken a different approach to assessing the prerequisite steps, leading it to conclude that claims 1 to 3 merely defined the operation of a technical device, with the result that the method was optical, and not surgical, in nature. The board in T 923/08 suggested that one reason for the difference in assessment approach might be that, in this case, it had also taken a different view from the board in T 836/08 with regard to the relevance of the chosen claim category. However, this showed that, ultimately, the boards enjoyed a margin of discretion in taking each individual decision, and that they could not be expected to exercise this discretion identically in every case (see also Chapter II.B.1.)

In T 1695/07 the board held that a blood manipulation process involving the continuous removal of blood from a patient, its subsequent flowing through a circulating line of an extracorporeal circuit and its re-delivery to the patient was a method of treatment of the human body by surgery excepted from patentability under Article 53(c) EPC. It did not belong to the kind of methods which should not be covered by the exception clause according to the "narrower understanding" suggested by the Enlarged Board of Appeal in decision G 1/07, because the process was not performed in a "non-medical, commercial environment" and could not be considered as a "minor intervention" being performed on "uncritical parts of the body".

Such an in vivo process required "professional medical expertise" and belonged to the kind of interventions representing the "core of the medical profession's activities", even when performed by paramedical support staff.

Even when the process was carried out with the required medical professional care and expertise, it involved "substantial health risks" for the patient. A health risk was considered to qualify as "substantial" whenever it went beyond the side effects associated with the treatments mentioned in G 1/07 such as tattooing, piercing, hair removal by optical radiation, micro abrasion of the skin. A factual analysis of absolute or relative risks and their likelihood of occurrence based on objective evidence was hardly feasible and should therefore not be required.

2.2 Therapeutic methods

In T 1635/09 (OJ EPO 2011, 542), claim 1 in the main request related to the use of a composition for oral contraception in which the hormone content was selected at such a low level as to prevent or reduce the likely pathological side-effects of such oral contraception. Having observed that, according to the boards' settled case law, the prevention of pregnancy was not a therapeutic method, not even when done prophylactically, the board sought to establish whether the subject-matter of the claim as a whole comprised one or more therapeutic steps and/or therapeutic effects.

The board stressed that the reduction in the concentrations of the active substances in no way served to improve the contraceptive effect, but solely to prevent or reduce secondary effects, such as e.g. unwanted side-effects. Thus, although the claim in question related to a use which was per se non-therapeutic, the selected concentrations of active substance defined in the claim simultaneously prevented the secondary effects likely to arise in the case of that per se non-therapeutic use. This prevention – which was affirmed in the claim by the indication of the concentrations of active substance and which, in the light of the pathological nature of the secondary effects, clearly had to be classed as therapeutic - was inseparably associated with the per se non-therapeutic contraceptive process. Taken as a whole, therefore, the subject-matter of claim 1 of the main request encompassed a therapeutic method. Accordingly, the subject-matter of claim 1 of the main request was not patentable pursuant to Article 53(c) EPC.

Regarding the first auxiliary request, which differed from claim 1 of the main request in that the disclaimer "non-therapeutic" had been introduced, the board stated that such a disclaimer allowed for the exclusion of therapeutic uses from a claim encompassing both therapeutic and non-therapeutic uses in such a way that they were substantively separable so that the remaining subject-matter was no longer covered by the exception to patentability under Article 53(c) EPC. However, such a disclaimer could not be employed to define as non-therapeutic a use which necessarily included one or more therapeutic steps, since the question whether or not a claimed use was therapeutic could be decided only in the light of the activities carried out, or the effects achieved, in the course of that use. Consequently, the exception to patentability under Article 53(c) EPC also applied to the subject-matter of claim 1 of the first auxiliary request, despite the introduction of the disclaimer "non-therapeutic" (see also under III.B.2.).

In T 1075/06 the board held that a method claim comprising the step of returning processed blood, depleted of some of its components and charged with an anticoagulant, to a donor is a method for treatment of the human body by therapy which is excluded from patentability under Article 53(c) EPC (see also point 2.1 above).

In T 385/09 the board had to consider a non-therapeutic method of cooling animals, such as cows, in which liquid reduced to a fine spray was applied to the animals and air was blown over the wetted animals. The cooling was to take place in the milking stall and the aim was to lure the cows into the milking stall. The board noted that the claimed method (since non-therapeutic) had to be construed as being directed to a treatment of animals which were in a normal, healthy state, even if feeling hot. Accordingly, the claimed method was not a method for treatment of the animal body by therapy but a method for providing a pleasant sensation to a healthy animal so that it enjoyed going into the milking stall in order to experience this pleasant feeling again.

B. Novelty

1. Defining the state of the art

Under Article 54(2) EPC, the state of the art comprises everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.

1.1 Excluded national prior rights

In T 1698/09, the board observed that, under Article 54(3) EPC, the state of the art comprised the content of European patent applications filed before the priority date of the patent in suit and published after that date. It held that a German utility model was not a German or a European patent application. It made no difference that Germany had been designated in the patent in suit.

1.2 European prior rights

Former Article 54(4) EPC 1973 confined the prior art effect under Article 54(3) EPC 1973 to the minimum necessary to avoid a collision of rights, i.e. to those contracting states which are designated in both the earlier and the second application. The deleted Article 54(4) EPC 1973 is still applicable to European patents already granted and applications pending at the time the EPC 2000 entered into force.

In T 1926/08, in order to establish novelty with respect to document D1, the patent proprietors had filed two sets of claims for different contracting states. The admissibility of a second set of claims had been objected to by the opponents. The patent at issue was granted before the date of entry into force of the EPC 2000.

The board stated that the legal framework relating to the possibility of filing different claims, description and drawings for different states needed to be analysed. It noted that, while Article 7 of the Act revising the EPC (Special edition No. 1 of OJ EPO 2007, 196), in conjunction with the Administrative Council's decision on the transitional provisions of 28 June 2001, provided that Article 123 EPC 2000 was also applicable to European patents granted before 13 December 2007, it also stipulated that Article 54(4) EPC 1973 would continue to apply to such patents. This was not contested. The point of dispute was whether or not Rule 87 EPC 1973 was a rule implementing Article 54(4) EPC 1973 and consequently could be applied, or whether the situation was covered by Article 123 and Rule 138 EPC. Indeed Rule 87 EPC 1973 allowed different claims, description and drawings for different states both in the case of an earlier European patent application which was part of the state of the art under Article 54(3) and (4) EPC 1973 and when a prior national right existed, while Rule 138 EPC 2000 only provided for the latter case.

The board pointed out that, as set out by the Legal Board of Appeal (J 3/06, OJ EPO 2009, 170; J 10/07, OJ EPO 2008, 567), a rule could affect different Articles. The board did not deny that Rule 87 EPC 1973 also affected Article 123 EPC. However the clear purpose of Rule 87 EPC 1973 was to take account of the situation where a conflicting application constituted prior art only for some and not for all designated states. It governed the procedure when this situation arose and thus was clearly linked to article 54(4) EPC 1973. A rule did not only implement an Article when it defined its substance in more detail, like Rule 23a EPC 1973 did by setting up a condition for the territorial scope of the conflicting application, but also when it provided a procedure for enforcing the substance of the article. If one did not allow a separate set of claims, the patent proprietor would have to limit his patent for all designated states. This would mean that the conflicting application had effect for all designated states. This was the situation under the EPC 2000, which, however, in the case at issue was not yet applicable. Not providing a procedure for enforcing what was laid down in Article 54(4) EPC 1973 ran counter to the legislator's intention because it would make Article 54(4) EPC 1973 redundant. Thus Rule 87 EPC 1973 was applicable and a separate set of claims was admissible.

1.3 Availability to the public

The state of the art comprises what has been made available to the public.

In T 7/07 a third party had claimed inter alia that the main claims of the patent lacked novelty over a prior use, namely, the conduct of clinical trials with contraceptives containing the composition claimed in the patent. The participants had been informed of the ingredients but had not signed a confidentiality agreement, and not all unused drugs had been returned. The third party claimed that, as a result, the drugs had become publicly available. The board noted that, according to the established case law of the boards of appeal, if a single member of the public, who is not under an obligation to maintain secrecy, is theoretically able to access particular information, this information is considered to be available to the public within the meaning of Article 54(2) EPC. It appeared that, after having handed out the drugs, the patent proprietor effectively lost control over them as the participants in the clinical trials were in no way barred from disposing of the drugs as they wanted. In view of these circumstances, the board came to the conclusion that the handing out of the drugs to the participants rendered them publicly available. It remained to be examined whether the skilled person was in a position to analyse their content and structure. In particular, it had to be evaluated whether he was able to determine the micronized state of drospirenone, which is an item of information that was not communicated to the women participating in the clinical trials. The board concluded that it was possible for the skilled person to discover the composition or the internal structure of the product used in the clinical trials and to reproduce it without undue burden (see also Chapter VII.C.2 and VIII. 2.1).

In T 278/09, when examining whether a product data sheet had been available to the public, the board observed that such a sheet merely described the components and features of newly developed or improved products, but as such contained no evidence in relation to marketing or any public availability. The decision whether and when to market a product could depend on other circumstances, such as the economic climate and the relevant firm's marketing policy. In any event, product data sheets did not necessarily become information destined for the public when it was decided to market the product they described, as customers to whom the sheet was distributed could be obliged to treat it as confidential. It was therefore insufficient in such a case to decide on the mere balance of probabilities that simple suppositions that an allegedly novelty-destroying product data sheet had been made available to the public were accurate (see also T 738/04).

In T 2/09 the board decided that the content of an e-mail did not become available to the public within the meaning of Article 54(2) EPC 1973 for the sole reason that the e-mail was transmitted via the internet before the filing date of 1 February 2000.

In T 1553/06 the board stated that the mere theoretical possibility of having access to a means of disclosure does not make it become available to the public within the meaning of Article 54(2) EPC 1973. What is required, rather, is a practical possibility of having access, i.e. "direct and unambiguous access" to the means of disclosure for at least one member of the public.

In the case of a document stored on the World Wide Web which can only be accessed by guessing a Uniform Resource Locator (URL) not made available to the public, "direct and unambiguous access" to the document is possible in exceptional cases only, i.e. where the URL is so straightforward, or so predictable, that it can readily be guessed.

The fact that a document stored on the World Wide Web could be found by entering keywords in a public web search engine before the priority or filing date of the patent or patent application is not always sufficient for reaching the conclusion that "direct and unambiguous access" to the document was possible.

Where all the conditions set out in the following test are met, it can be safely concluded that a document stored on the World Wide Web was made available to the public:

If, before the filing or priority date of the patent or patent application, a document stored on the World Wide Web and accessible via a specific URL

(1) could be found with the help of a public web search engine by using one or more keywords all related to the essence of the content of that document and

(2) remained accessible at that URL for a period of time long enough for a member of the public, i.e. someone under no obligation to keep the content of the document secret, to have direct and unambiguous access to the document, then the document was made available to the public within the meaning of Article 54(2) EPC 1973.

However, it should be noted that if any of conditions (1) and (2) is not met, the above test does not permit to conclude whether or not the document in question was made available to the public.

1.4 Obligation to maintain secrecy

If the person who was able to gain knowledge of the invention was under an obligation to maintain secrecy, the invention cannot be said to have been made available to the public, provided the person did not breach that obligation.

In T 1168/09, two prior uses were alleged: the supply of 170 ESG 400 control units and the supply of 111 143 ESG 300/600 control units.

The board found that, where control units had been sold unconditionally, the purchaser had to be deemed a member of the public because he was then entirely free to do as he wished with them. In the case at hand, however, no information had been submitted with regard to the conditions of supply and, in particular, as to whether or not confidentiality had been agreed. The board therefore investigated whether, in the light of the business relationship between the supplier and the customer, it had to be presumed that an obligation to maintain secrecy had been tacitly agreed.

A tacit obligation to maintain secrecy could be presumed, for instance, where business partners had a shared interest in confidentiality, e.g. where one partner in a development project provided the other with samples of the jointly developed product for testing. However, such an interest could only be presumed until the parts had been supplied for serial production because, from then on, the parts were destined to be fitted in cars for sale and so made available to the public. In other words, a shared interest in confidentiality could no longer be presumed once parts had been delivered for serial production (see T 1512/06).

In the case at hand, the board found that the large number of control units supplied suggested that they had not been test units. It therefore held that they had been publicly available.

In T 945/09 the teaching according to claim 1 of the patent in suit was used by a patient while having "home parenteral nutrition" (HPN). The opposition division had concluded that all information concerning the use of taurolidine as a catheter lock available to the acting medical team, to the patent proprietor (supplier of taurolidine) and to the patient, was covered by an implicit obligation of confidentiality which stemmed from the specific circumstances of the case.

The board noted that the patient, after his long history of complications leading to multiple replacements of the catheter usually knew what was happening to him and he was interested in the nature of all actions intended to bring him relief. In addition, the "evaluation of the patient's protocol of site care" would not have been possible without exact explanation. Consequently, the board was of the opinion that the intention connected with the heparin replacement by 1.5 mL of taurolidine solution was sufficiently explained to him. Therefore, the board based its considerations and conclusions on the knowledge of the patient being clear and concise enough that he could take notice of the technique used after replacement of heparin-lock by taurolidine-lock, representing the teaching of claim 1 of the patent in suit.

The board held that there was no reason for the patient to treat that knowledge as a secret, because at that time the acting doctors simply tried to apply taurolidine of whatever provenance using a technique they derived freely and easily from the state of the art common to them at that time. The straightforward use of a compound as such was crucial for the assessment of novelty. Moreover, the action in the hospital of using the taurolidine-lock was not typical of a clinical or even an experimental approach because it was dictated by the instant necessity to help a patient in a very desperate situation and thus had not been planned systematically as a scientific experiment. Thus, the subject-matter did not meet the requirements of Article 54 EPC.

1.5 Issues of proof

1.5.1 Information retrieved from the internet

In T 2339/09, the board observed that information disclosed on the internet is considered publicly available from the date on which it was posted online. As a rule, the balance of probabilities applies in deciding whether the prior art comprises the documents in question. According to the search report, D4 was an internet article dated 22 May 2006 and relating to a product catalogue of HBE GmbH, which had been found in an internet archive at www.archive.org on 21 March. The date of the catalogue's online publication was therefore 22 May 2006, i.e. before 17 November 2006, which was the filing date of the application in question. Moreover, the catalogue bore an imprint with the date "11.10.04", which suggested that it had been published "offline" even earlier. In any event, the relevant dates were prior to the filing date and it therefore had to be found that D4 formed part of the state of the art.

The board held that the appellant bore the burden of presenting the case for and proving the contrary, i.e. that D4 had not been published before the filing date. To that end, the appellant submitted that D4 had been found, through a search engine at www.archiv.org, with 7 January 2007 as its publication date, i.e. after the filing date. However, it had failed to adduce evidence to prove this. What was more, the name of the search engine differed from that in the search report, while the date of the search was unknown, but likely to have been significantly after the date of the search report. The appellant's submissions were therefore inadequately substantiated and unsuitable to rebut the presumption that D4 was part of the prior art.

2. Determining the content of the relevant prior art

After establishing what information forms part of the state of the art, the next step is to determine its technical content and whether that content is apparent.

2.1 Taking implicit features into account

In T 701/09, the board found that direct and unambiguous disclosure was not limited to explicit or literal statements, but equally included implicitly disclosed information which a reader skilled in the art would unequivocally gather from the overall context of a cited document.

3. Chemical inventions and selection inventions

In T 1130/09, the "selection invention" principle had been applied in the contested decision for the purpose of assessing novelty, regard being had to the three criteria developed in T 198/84 (see OJ EPO 1985, 209). The board observed that this principle was applicable where a narrow sub-range was selected from a broader range. The passage on page 9, lines 5 to 7, of document (2) disclosed that the dimensions of the structures were measured in nanometres or micrometres. Therefore, as had already been established in the contested decision, the range specifically claimed was a narrow selection which, in the absence of examples in document (2), had to be considered far removed from the central embodiments in that document.

The board thus held that the first two of the criteria defined in T 198/84 were met. The third - that a technical effect of the narrower sub-range claimed had to be demonstrated - could not, however, be considered for the purpose assessing novelty, because novelty and inventive step were two distinct requirements for patentability. A technical effect within the more narrowly claimed range did not confer novelty on a numerical range which was already novel per se, but merely confirmed its already established novelty. Whether or not there was a technical effect nevertheless remained a matter of inventive step (see T 1233/05; T 230/07). The board therefore held that, in relation to the structure dimensions, document (2) did not disclose the now claimed range of 10 nm to 100 mym and that the subject-matter of the original claim 1 was novel over document (2) within the meaning of Article 54 EPC.

C. Inventive step

1. Problem and solution approach

The "problem and solution approach" is regularly applied by the departments of first instance of the EPO in the course of deciding whether or not claimed subject-matter fulfils the requirements of Article 56 EPC. In T 188/09 the appellant, referring to decision T 465/92, observed that there are, however, cases where the "problem and solution approach" hinders rather than assists answering the question of whether claimed subject-matter is obvious over the prior art. In T 465/92 (OJ EPO 1996, 32) the board had explicitly decided not to use the "problem and solution approach" because it had considered that the seven relevant citations were all equally close to the claimed invention.

The board noted first that whatever approach was applied as an auxiliary means for the evaluation of inventive step of claimed subject-matter, in a given evidential situation it had to provide the same result, be it either in favour of or against inventive step. Therefore, in the case at issue, even if the "problem and solution approach" was applied, the decision on inventiveness should be the same as if it had not been used. In T 465/92 it had also been noted that there might be situations which "can result in a complicated multi-step reasoning where the facts were clear, either for or against inventiveness. Thus, if an invention breaks new ground it may suffice to say that there is no close prior art rather than constructing a problem based on what is tenuously regarded as the closest prior art."

The board stated that none of the circumstances for the avoidance of the classical "problem and solution approach" was present in the case at hand, i.e. neither could the claimed subject-matter be considered as breaking new ground nor was there a large number of equally close prior art documents.

2. Closest prior art

The boards have consistently held that, where more than one document is cited as the closest prior art, the one which must be deemed the closest is that which provides the skilled person with the most promising springboard to the invention, i.e. the one starting from which the subject-matter of the invention is rendered most obvious (T 824/05).

In T 53/08, documents (1) and (10) - like the patent in suit - concerned herbicides for use in controlling weeds harmful to maize, rice and cereal cultures. Document (1) described the formula (A1) herbicide and its combination with other active ingredients, whereas document (10) disclosed compositions containing substituted isoxazoline derivatives which acted as safeners.

The board found that the disclosure in each of the two documents differed from the patent in suit in respect of just a single feature. In deciding whether document (1) or document (10) had to be regarded as the closest prior art, it considered the patent's objective, which was to develop the highly effective herbicidal ingredient of formula (A1) in such a way that it did not significantly damage crops when used in a concentration with herbicidal effect.

The natural starting point for the invention was therefore the document disclosing the active ingredient of formula (A1), i.e. document (1). Although ideas as to how to solve the problem could be gleaned from document (10), it primarily addressed the development of isoxazoline derivatives as safeners. Accordingly, the skilled person would not, at first glance, consider it a starting point for improving the selectivity of a specific herbicide.

3. Combination of documents

In T 715/09 the respondent submitted that the skilled person versed in the art of glow plugs would not, as part of his common knowledge, be aware of plasma deposition technology. Support for this submission was that glow plugs and surface treatment techniques were in two completely different classes according to the international patent classification scheme, namely F23Q7/00 and C23C respectively.

The board disagreed and stated that IPC classification alone was no reason for determining whether or not two pieces of prior art could be combined. The mere fact that two documents had the same classification was no reason for saying the combination of the teachings was obvious (T 745/92). Likewise the mere fact that the technologies had been given different IPC classes did not necessarily mean that they could not be combined.

4. Treatment of technical and non-technical features

4.1 Formulation of the technical problem

In T 1769/10 the application was refused by the examining division because of lack of inventive step over D1. The invention related to an internet remote game server. D1 disclosed a gaming system comprising a casino server communicating with a plurality of gaming devices allowing players to play wagering games. The differences of the subject-matter of claim 1 of the application over the closest prior art allowed maintaining player anonymity in the game transactions between the game outcome servers and the player management server. Thus, some of the aims were to improve the player's access to games and to maintain confidentiality of the player's data in the player database.

The board stated that these aims were in the non-technical field of schemes, rules and methods of playing games and doing business, and might thus, in accordance with established jurisprudence, legitimately appear in the formulation of the technical problem to be solved, in particular as a constraint that has to be met (Case Law of the Boards of Appeal, 6th edition 2010, I.D.8.1; T 641/00, OJ EPO 2003, 352). The board noted that this jurisprudence provided a methodology for applying the problem-solution approach, generally adopted in the EPO for assessing inventive step, to inventions involving aspects in the non-technical field. In fact, the Enlarged Board of Appeal noted that, while numerous board of appeal decisions cited the earlier decisions defining this methodology, it was not aware of any divergence in this case law, suggesting that the boards were in general quite comfortable with it, and concluded that it would appear that the case law, as summarised in T 154/04 (OJ EPO 2008, 46), had created a practicable system for delimiting the innovations for which a patent may be granted (G 3/08, OJ EPO 2011,10).

The board furthermore stated that in the problem-solution approach, the objective technical problem to be solved is formulated based on the technical effect caused by the distinguishing features of the claim over the prior art, and thus depends on the individual case. This is also the case for inventions involving aspects in the non-technical field. Accordingly, depending on the available prior art and what is claimed, the objective technical problem to be solved may be formulated generally as to implement technically (the constraints as imposed by) the aim to be achieved in the non-technical field. In the case where some general form of implementation of the aim to be achieved in the non-technical field is already known from the prior art, the objective technical problem to be solved may be formulated more specifically as how to implement technically the aim in the non-technical field, or, reworded, to provide a technical solution involving technical means how to achieve the aim in the non-technical field. The technical problem was how to improve the player's access to games while maintaining confidentiality of the player's data in the player database in terms of a technical solution using technical means. In the case at hand the subject-matter involved an inventive step.

In T 1235/07 the invention used a tree diagram to view and navigate through the dimensions and levels of data in a multidimensional database. It showed results of arbitrary "drill-down" and "slice-and-dice" combinations in the tree diagram.

In the board's view the problem solved by the invention boiled down to showing the user what he wanted to see in the tree structure, in this case the result of a slice-and-dice or drill-down analysis. The board stated that a slice-and-dice operation was merely a manipulation of data, like taking a square root, that did not in itself have technical character and this could not contribute to inventive step. Similarly, showing the results in the tree structure was a presentation of information that had no technical character. The board could not see anything technical in the nature of the information itself, which not being tied to any particular application, just represented abstract data. The same applied to the drill-down operation. The board was thus in this case taking a wider view of "presentation of information" than just the actual information that was displayed, the so-called cognitive content, to include also structural aspects of how the information was displayed. In the board's view, such additional aspects could only contribute to inventive step if they had technical character.

The board referred to jurisprudence in this field holding that similar presentations of information were not technical. In particular, T 1143/06 discussed some of this jurisprudence and concluded that representing, by the speed of an element moving on a display, the relevance of data in a database to sort statements had no technical effect. The board concluded that claim 1 did not involve an inventive step.

4.2 Methods of playing games

In decisions T 1782/09 and T 1225/10 the board had to deal with the technical implementation of game rules. The board stated that "game rules" form part of "the regulatory framework agreed between [or with] players concerning conduct, conventions and conditions that are meaningful only in a gaming context (T 12/08). They govern the conduct and actions of the players during game play (T 336/07). Thus, "games rules" define inter alia the structural set-up of the game that allows choices to be made and determines how the game play evolves from the beginning to its end in response to player actions and decisions.

Both inventions were mixed as they both had non-technical aspects (relating to the game rules) and technical aspects (relating to their implementation). In dealing with such "mixed" inventions the board adopted the approach as set out in T 1543/06 which is based foremost on T 641/00 (OJ EPO 2003, 352). Thus, only those features that contribute to technical character are to be taken into account when assessing inventive step. That requirement cannot rely on excluded (non-technical) subject-matter alone, however original that matter might be. The mere technical implementation of something excluded cannot form the basis for inventive step. Decisive for inventive step is the question how excluded subject-matter has been technically implemented, and whether such implementation is obvious in the light of the prior art. As explained in T 1543/06, such a consideration focuses on any further technical effects associated with implementation of the excluded subject-matter over and above those inherent in the excluded subject-matter itself.

In T 1782/09 the examining division held that the claimed subject-matter did not involve an inventive step because it was an obvious modification of the classic "Tetris" computer game rules. Claim 1 related to a falling block computer game in which objects or blocks were displayed to fall from an upper portion of a game field towards its lower portion.

Game rules were clearly recognisable in the distinguishing features of claim 1. They specified the set-up of the game apparatus and its display and limited what a player could do in the context of the game. From this the board concluded that the non-technical aspects of the distinguishing features reflected modified game rules of the D1 computer game (closest prior art) and the technical aspects reflected the technical implementation thereof. The board was unable to identify any further technical advantages or effects associated with the specific features of implementation over and above the effects and advantages inherent in the modified game rules. Therefore, the objective technical problem was merely to technically implement the modified game rules on the D1 computer game apparatus. This was obvious.

In T 1225/10 the application (Nintendo) concerned what was essentially a computer game in which a player character was to be moved on a display through a field of background objects, and in which collisions with certain ones elicited a game response that depended on collision direction. Under certain conditions the field could rotate, with game play continuing as before in the rotated field. The claimed invention was concerned not so much with these underlying game rules, but rather with the way they were implemented in various display, process and determination steps of the game program stored on a storage medium (claim 1) or by corresponding means of the game apparatus (claim 8). The main focus was on the particular way the fields were generated and displayed, and the way the system detected collisions.

The board stated that the implementation of the game rules - inherently non-technical subject-matter excluded under Article 52(2)(c) EPC - was in the form of a storage medium storing a game program that controlled display and game data processing (claim 1) on the one hand, and by corresponding means of the game apparatus (claim 8) on the other. In either case implementation involved technical means so that, following the approach of T 931/95 (OJ EPO 2001, 441) and T 258/03 (OJ EPO 2004, 575), the claimed storage medium and game apparatus were technical. In the case at issue the board concluded that the claimed subject-matter involved an inventive step.

4.3 Further cases

The application of T 1244/07 was a divisional application derived from and essentially identical to the original parent "1-click" (Amazon) application, which had been withdrawn. It related to purchasing an item over the internet in a single action. In conventional online shopping, the user selects items (e.g. using the "shopping cart" model) and then completes the order with personal information. The invention set out to reduce the number of user interactions involved in selecting and purchasing items and also to reduce the amount of sensitive information sent over the internet. Both objects were achieved by displaying a "1-click" ordering button alongside the description of an item. The board held that all requests lacked inventive step.

The board considered that the subject-matter of claim 1 differed from the closest prior art (article D1 "Implementing a Web Shopping Cart") in that the purchaser's identification information was not inputted when ordering the item, but looked up in the customer table using a client identifier received from the client and that the "single action" indication was only sent if it was "enabled". These features could be seen to solve the two above-mentioned problems in the application, namely to reduce the number of user interactions and also to reduce the amount of sensitive information sent over the internet.

The board stated that in order to read sensitive data from the database, one would need a key that identifies the purchaser in question. In the board's view it would be self-evident to use the user identifier or cookie already available in D1 to do this. The use of cookies to keep track of purchaser-specific data was known at the priority date. The appellant argued that the step of enabling the single action order was a broader part of the whole invention and was connected to the security of the system, since it meant that items could be purchased inadvertently. The board stated that this merely shifted the responsibility for the security to the purchaser who judged whether the single-action ordering should be enabled or not. Such a decision relates to forms of human behaviour and thinking that fall under mental acts, which are excluded from patentability. According to the jurisprudence of the EPO these cannot contribute to inventive step. Its implementation by means of a determination and a conditional sending step were clearly routine matters of design.

Finally, the board noted that a long felt want is often an indicator of inventiveness, usually overshadowing aspects of commercial success. However, in the case at issue, cookies were first proposed in 1996 shortly before the invention was made. Thus the invention was not a situation of a long felt want, but more an immediate application of this new programming feature as soon as it had become available in that field.

Similar applications were considered by national courts in the United States and Canada as well as in several other countries.

In T 928/07 (automatic teller machine and a cash card) the board stated that preventing a cash card from accidentally being rendered useless was a technical problem, and that the solution to this problem, which as claimed lay in providing an area of the card which stored the details of the master account such that it could not subsequently be erased, was also technical in nature. As regards the cash card itself, it was established case law of the boards of appeal that a computer-readable medium was a technical product and, thus, had technical character (T 424/03). It followed that the claimed system comprising an automatic teller machine and a cash card had technical character. Having established that the particular problem of preventing the card from being completely erased and its solution were both technical, as well as that the claimed system itself was also technical in nature, it had to be decided whether providing a system as claimed, which enabled the user to add and delete accounts from his card, would have been obvious to the skilled person in the light of document D1. D1 was not only silent as regards the possibility of deleting accounts, but its teaching was incompatible with that idea and clearly taught away from the idea of deleting accounts. Thus, the invention involved an inventive step.

5. Chemical inventions

In T 777/08 (OJ EPO 2011, 633) the claims in question related to a particular polymorph (form IV) of crystalline atorvastatin hydrate. The board considered that the amorphous form of atorvastatin, as obtained according to the processes of documents (1) and (2) represented the closest state of the art. The appellant defined the problem to be solved in view of this prior art as lying in the provision of atorvastatin in a form having improved filterability and drying characteristics. Having regard to the experimental results reported in document (25), which demonstrated shorter filtration and drying times for form IV compared to the amorphous form, the board was satisfied that this problem had been solved.

It remained to be investigated whether the proposed solution would have been obvious to the skilled person in the light of the prior art and the relevant common general knowledge.

In its headnote the board stated that at the priority date of the patent in suit, the skilled person in the field of pharmaceutical drug development would have been aware of the fact that instances of polymorphism were commonplace in molecules of interest to the pharmaceutical industry, and have known it to be advisable to screen for polymorphs early on in the drug development process. Moreover, he would be familiar with routine methods of screening. Consequently, in the absence of any technical prejudice and in the absence of any unexpected property, the mere provision of a crystalline form of a known pharmaceutically active compound could not be regarded as involving an inventive step.

When starting from the amorphous form of a pharmaceutically active compound as closest prior art, the skilled person would have a clear expectation that a crystalline form thereof would provide a solution to the problem of providing a product having improved filterability and drying characteristics. The arbitrary selection of a specific polymorph from a group of equally suitable candidates could not be viewed as involving an inventive step.

The skilled person in the field of drug development would not be dissuaded from attempting to obtain a crystalline form by the prospect of a potential loss of solubility and bioavailability when compared to the amorphous form, but would rather regard this as being a matter of trade-off between the expected advantages and disadvantages of these two classes of solid-state forms.

6. Secondary indicia - enhanced effect

In T 423/09 the respondent argued that the idea underlying the present invention was to improve the preservation of the milk quality of the collected milk samples by enabling strongly accelerated dissolution of the preservative in the milk samples and that this idea was not taught by the cited prior art.

The board did not agree and referred to the handbook D9 "National Dairy Herd Improvement Handbook" which deals with practices to be followed with regard to milk sample preservation. On page 2 of the handbook the recommended practice was as follows; "Make sure you mix the milk and preservative well by rotating the bottles as they are filled or by gently rotating the whole box after you complete milking". The board concluded that the skilled person following this recommended practice would also consider agitating the milk sample collecting element as it is filled and would thus "strongly" accelerate the dissolution of the preservative in the milk sample.

The board referred to the established case law that an enhanced effect could not be adduced as evidence of inventive step if it emerged from obvious tests, see in particular T 296/87 (OJ EPO 1990, 195). It stated that in the case at issue the enhanced effect, that was the strongly accelerated dissolution of the chemical preservative, did not emerge from routine tests but from the practice to be followed according to the rules and recommendations of the handbook. The skilled person following the recommended practice prescribed in this handbook, and thus acting only routinely would inevitably obtain this enhanced effect, which therefore could not be taken as an indication of inventive step.

The board concluded that an enhanced effect could not be regarded as an indication of inventive step if it resulted from the recommended practice prescribed in a handbook.

II. CONDITIONS TO BE MET BY AN APPLICATION

A. Sufficiency of disclosure

1. Parts of the application relevant for assessing sufficiency of disclosure

In T 390/08 the board pointed out that the sufficiency of disclosure of a patent is not to be assessed on the basis of the claims alone, but on that of the patent specification as a whole (see e.g. T 147/83 and T 202/83). Nor is a patent specification aimed at a layman, but at a skilled person with common general knowledge in the technical field concerned. In the case at issue therefore, the skilled person learned from the description of the patent specification that a broader technically meaningful interpretation was to be given to the expression 'without formation of hydrocarbons' than the strict literal interpretation given it by the opposition division.

2. Clarity and completeness of disclosure

For the assessment of the requirements of Article 83 EPC, it is not necessary for the board to determine whether a desired effect has actually been obtained, nor is it the board's function to verify if an invention works properly (T 1546/08). An invention is sufficiently disclosed if at least one way is clearly indicated enabling the person skilled in the art to carry out the invention and if the disclosure comprises the necessary technical information that permits the intended result to be achieved in at least some realistic cases (T 487/91). It should at least be plausible from the disclosure that its teaching does indeed solve the problem it purports to solve (T 1329/04).

3. Reproducibility without undue burden

Where a therapeutic application is claimed in the form of the use of a substance or composition for the medicament for a defined therapeutic application, attaining the claimed therapeutic effect is a functional technical feature of the claim. As a consequence, in order to meet the requirements of sufficiency of disclosure, the application at issue had to disclose the suitability of the product to be manufactured for the claimed therapeutic application (T 1685/10, following T 433/05).

4. The relationship between Article 83 and Article 84 EPC

4.1 Article 83 EPC and support from the description

The respondent/opponent in T 1414/08 argued that under Article 69(1) EPC the description should be used to interpret the claims. The board pointed out that Article 69(1) EPC related to the extent of protection conferred by a European patent or patent application. According to the Protocol on the Interpretation of Article 69 EPC this should be done so as not to overestimate either the literal wording of the claims or the general inventive concept disclosed in the description.

Transferred to the case at issue, the board found that, where a tissue product was claimed and different methods of measuring the tensile strength of that product were known in the art which gave different results, this meant that the end values of the range for the tensile strength remained ambiguous, irrespective of whether a specific test method was disclosed in the patent or not. In other words, if - for the purpose of sufficiency of disclosure - it was a requirement that a person skilled in the art had to know the scope of the claims, the disclosure of the claimed subject-matter would be insufficient except where a complete method was included in the claim.

The board noted that the scope of protection as defined in Article 69 EPC may have some relevance for the purposes of Articles 84 EPC and 123(3) EPC which both mention the protection sought for or conferred by a patent. In contrast, Article 83 EPC concerning sufficiency of disclosure is completely silent about that issue. For these reasons, and in the circumstances at issue, the question of whether a skilled person could know what was covered by the claims was a question of definition of the claimed subject-matter, hence Article 84 EPC, rather than of sufficiency of disclosure (Article 83 EPC).

4.2 Article 83 EPC and clarity of claims

According to the board in T 891/07, Article 83 EPC does not require that details should be provided to enable each and every construction covered by the claims to be implemented; this would be an impossible undertaking when the claims are drafted in functional terms. Even if hypothetical, non-implementable constructions might be conceived, this did not prevent the general principle being claimed in its full breadth if the skilled person was not put in a position where he systematically had to resort to inventive ingenuity in order to carry out the invention. Examination under Article 83 EPC should not be reduced to a quest for a single construction which cannot be implemented on the basis of the information provided in the application; this article concerns whether the invention has been sufficiently disclosed rather than whether scenarios exist for which a full explanation has not been provided.

According to T 256/87, one of the criteria for sufficient disclosure is that a skilled person reading the patent specification is able to carry out the invention in all its essential aspects and knows when he is working within the forbidden area of the claims. In T 482/09, however, the board found that this could not be taken to mean that an invention was inevitably unworkable under Article 83 EPC if the claims used a term which was vague for the purposes of Article 84 EPC and could not be defined more specifically on the basis of the description or common general knowledge.

Whether a competitor could know that he was working within the forbidden area of the claims therefore depended at most on whether the claims were worded clearly enough to satisfy Article 84 EPC. Article 83 EPC, by contrast, made no mention of the scope of protection of the claims or the patent and merely required that the invention be disclosed in the patent application in a manner sufficiently clear and complete for it to be carried out by a skilled person.

In opposition and any ensuing appeal proceedings, the result of using an indefinite term in a claim was instead that novelty and inventive step had to be assessed in the light of the prior art identified on the basis of all technically meaningful possible interpretations of the term, since the limits to the claims' scope of protection could not be determined on the basis of that term. Indeed, if the term had no specific meaning whatsoever, it would even lose entirely its effect of delimiting the subject-matter from the relevant prior art.

5. Evidence

The appellant/opponent in T 386/08 argued that where neither the patent nor the prior art expressly disclosed how to obtain a particular embodiment of the claim, the burden should be on the patentee to prove that the variants at issue could be obtained. It cited T 792/00 and T 397/02 in support.

The board disagreed. In T 792/00 the burden of proof was held to lie with the patentee because (i) the claimed invention went against a prevailing technical opinion and (ii) the patent contained only an example which was expressly labelled as a hypothetical experimental protocol. In T 397/02 the claimed method was conceptually different from the approach taught in the prior art and so, the board not being convinced that the invention worked, the proprietor had to demonstrate that it did.

The circumstances of the case at issue were different; the concept and methods were known and could, from a technical point of view, be applied. The submission that there was no disclosure that anyone had applied the known method to this particular situation did not necessarily establish that there was a prevailing opinion that this could not be done. It was therefore the appellant opponent who should prove that the variants at issue could not be made.

B. Claims

1. Indication of all essential features in the claim

In its headnote to decision T 923/08 the board made the following comments:

If a method for recording measurements on the human or animal body necessarily entails a surgical step in order to fix to the human or animal body a measuring device which is indispensable for performing the method, this step has to be deemed an essential feature of the method and is comprised in such a method, even if the claim contains no method feature explicitly directed to it. Such a method is excluded from patentability under Article 53(c) EPC.

The exclusion of such a surgical step, whether by stating that the surgically attached measuring device was already fixed to the body before the start of the method or whether by use of a disclaimer, breaches Article 84 EPC 1973 because such a process claim does not then include all the essential features of the claimed invention. See also under I.A.2.1.

2. Burden of proof in relation to an exception under Rule 43(2) EPC

The patent application concerned in decision T 1388/10 had been refused by the examining division on the basis of an amended set of claims containing two (and no longer three) independent claims in the same category. In the reasons for its decision, the examining division had stated that the applicant had not overcome its previously communicated objection under Article 84 EPC, Rule 29(2) EPC 1973 [Rule 43(2) EPC]. The applicant had failed to give reasons indicating why the amended set of claims qualified as one of the three exceptions referred to in Rule 43(2) EPC.

Contrary to the view taken by the appellant, the board held that the examining division's objection was worded unambiguously. It stressed that the onus of setting out and proving the case for the application of an exception (in this case, an exception under Rule 43(2) EPC) lay with the party seeking to rely on that exception. In the case in issue, this was the applicant, who bore sole responsibility for the wording of the claims and thus also for deciding how many claims in the same category the application should contain.

An applicant wanting more than one independent claim in the same category must, if the examining division objects, convincingly demonstrate that all the additional independent claims come under one of the exceptions provided for in Rule 43(2) EPC (see e.g. T 56/01 and the preparatory document for the amendment of Rule 29(2) EPC by the Administrative Council of the European Patent Organisation, CA/128/01 Rev. 2 of 10 December 2001, page 2, point 6).

Here, the applicant had failed altogether in its obligation to set out its case. See also under VII.B.2.1.

3. Using the description to interpret the claims

In T 197/10 claim 1 referred to a builder-containing detergent or cleaning composition comprising a water-soluble builder block composed of components (a) to (e). The respondent (patent proprietor) argued that the term "builder block" was not necessarily clear for the person skilled in the art. It maintained that the skilled person would consult the description, where he would learn that builder block referred to all the builder substances in the detergent and cleaning agent and that all of these substances had to be water-soluble. The board did not agree with this line of argument and found the term in claim 1 to be described as being composed of components (a) to (e), and furthermore that the remaining wording of the claim left no doubt as to the term's meaning. The claim was worded in such a way as to leave room for the presence of other components such as insoluble builder substances in addition to the water-soluble builder block.

The board observed as follows:

If the claims are worded so clearly and unambiguously as to be understood without difficulty by the person skilled in the art, there is no need to use the description to interpret the claims. In the event of a discrepancy between the claims and the description, the unambiguous claim wording must be interpreted as it would be understood by the person skilled in the art without the help of the description.

Thus, in the event of a discrepancy between clearly defined claims and the description, those elements of the description not reflected in the claims are not, as a rule, to be taken into account for the examination of novelty and inventive step.

4. Consideration of Article 84 EPC in the case of multiple requests

The procedure to be followed by the examining division when assessing the claims for compliance with Article 84 EPC in cases where there are multiple requests was considered in decision T 75/09 (see under Examination Procedure, VII.B.).

III. AMENDMENTS

A. Article 123(2) EPC

1. General issues

In T 1171/08, the appellant/opponent contended that the claimed subject-matter could not be clearly and unambiguously derived from the application as filed (Article 123(2) EPC). The respondent/patent proprietor countered that there had been no inadmissible extension, if only because all the conditions needed to achieve selective COS removal were implicitly included in the claim by virtue of the indication of purpose.

The board found that indicating the purpose as a functional feature in a use claim limited the claim to those embodiments whereby the purpose could be achieved. Only to that extent could the indication of purpose implicitly comprise features essential to achieving the desired selectivity. By no means, however, could the indication substitute the essential features specifically disclosed in that connection in an application. Were that the case, there would be no need to identify in the claim 1 at issue the essential ingredients of the wash solution and their concentrations. However, that would clearly result in an extension of the subject-matter beyond the content of the application as filed, because the latter only disclosed wash solutions necessarily composed of particular amounts of specific aliphatic alkanolamines and specific primary or secondary amines as activators. For the purposes of Article 123(2) EPC, the board therefore examined which features could be directly and unambiguously derived in connection with the intended purpose from the application as filed.

A selective removal of COS as opposed to CO2 was mentioned three times in the application as filed. Contrary to what the respondent/patent proprietor had claimed, the original description did not directly and unambiguously teach that the selective removal of COS was attributable only to the composition of the wash fluid and its activator content.

The board thus held that, in the absence of such a reference to the use of the specific wash fluid defined in claim 9 as filed to remove COS selectively, the skilled person could not derive the new combination of features directly and unambiguously from the application as filed.

2. Intermediate generalisation – non-disclosed combinations

In T 477/09, the invention was a dental composition based on silicone crosslinkable by a cation process. The appellant had submitted both in writing and during the oral proceedings that the amendments filed with auxiliary request V were based on example 3 of the patent in suit.

The board held, in particular, that there was nothing in the application as filed from which it could be concluded that it was possible to combine particular features relating to the charges used in example 3 with other features disclosed in a more general context. In particular, the application as filed contained no information indicating that the features of the charges (3) were not closely related to the other features of compounds (1), (2) and (4) according to claim 1 as reduced to practice in example 3.

The board concluded that example 3 disclosed nothing more than a very specific combination of technical features and that the application as filed contained no information from which any teaching derivable from example 3 could be generalised to all the compositions defined in claim 1.

The appellant had put forward only example 3 as a basis for amendments. The board found no other passage or passages in the application as filed which could have served as the basis for amendments made at such a general level. Auxiliary request V was refused.

3. Technical contribution – addition or deletion of a feature

In T 783/09 the opposition division stated that the subject-matter of the claim 1 at issue was a selection from two lists and therefore contravened Article 123(2) EPC. In particular, it stated that the list comprising pioglitazone, rosiglitazone and troglitazone could not be considered in isolation, since no hint existed in the application as filed that the three compounds in question would be preferred over the other preferred "further antidiabetic compounds".

The board considered that a first issue in the case before it was whether or not the skilled person would derive directly and unambiguously each of the three "basic" combinations to which claim 1 pertained, i.e. LAF237 combined with either of pioglitazone, rosiglitazone or troglitazone, from the application as filed. The board concluded i.a. that the skilled person would derive from the fifth paragraph on page 21 that "very preferred" combinations of the invention were (i) those having the compound "LAF237" as DPP-IV inhibitor in combination with any one of the disclosed twenty-two compounds as the further antidiabetic compound and (ii) those having the compound "DPP728" as DPP-IV inhibitor in combination with any one of the disclosed twenty-two compounds as the further antidiabetic compound. Thus, the skilled person would directly and unambiguously recognise forty-four individual combinations, among them the three "basic" combinations referred to in claim 1.

The board referred to the statement in decision T 12/81 (OJ EPO 1982, 296) that if "two classes of starting substances are required to prepare endproducts and examples of individual entities in each class are given in two lists of some length, then a substance resulting from the reaction of a specific pair from the two lists can nevertheless be regarded for patent purposes as a selection and hence as new" and noted that therefore many boards have denied a direct and unambiguous disclosure for individualised subject-matter that was only derivable from a document by combining elements from lists.

The board stated however that, given the term "can" in the citation from decision T 12/81, the absence of a direct and unambiguous disclosure for individualised subject-matter is not a mandatory consequence of its presentation as elements of lists. Thus, the "disclosure status" of subject-matter individualised from lists has to be determined according to the circumstances of each specific case by ultimately answering the question whether or not the skilled person would clearly and unambiguously derive the subject-matter at issue from the document as a whole.

In this case all combinations resulting from the combination of the elements of the two lists according to the passage on page 21 were directly and unambiguously disclosed in that passage. Thus, each of the combinations according to claim 1 was disclosed in an individualised manner in the application as filed and therefore there was no breach of Article 123(2) EPC in this respect.

A further issue was whether or not the claiming of only three of the forty-four combinations disclosed en bloc in the passage on page 21 extended the content of the application as filed in an unallowable way. This passage advertised the forty-four combinations as "very preferred embodiments". By this statement the skilled person was taught that each of the forty-four combinations had the same quality, i.e. they were all very preferred combinations in the context of the invention. Nothing else was derivable from the remainder of the application, i.e. a particular quality, for example a particular technical effect, was attributed neither to the three combinations of claim 1 nor to the remaining forty-one. Hence, the group of combinations in claim 1 could not be considered as the result of a selection of three qualitatively equal elements from a list of forty-four qualitatively non-equal elements - for which selection there would be no hint in the application as filed and the claiming of which group therefore would have to be considered as adding matter. Rather the group of claim 1 was to be considered as the result of the deletion of forty-one elements from a list of forty-four qualitatively equal elements. In the board's judgement, under these circumstances, claim 1 was not directed to subject-matter extending beyond the content of the application as filed. The board's view was supported by case law, for example decision T 10/97.

In summary, the subject-matter of claim 1 complied with the requirements of Article 123(2) EPC. The decision of the opposition division was set aside.

The invention in T 2230/08 concerned a method of regenerating a catalyst/absorber. The undisclosed modification contained in claim 1 as granted and still present in claim 1 of the auxiliary request would therefore be prejudicial to third parties relying on the invention as described in the application as originally filed, as that undisclosed modification which was technically sensible might possibly be the basis for a valuable invention. Claim 1 of the auxiliary request was not restricted to any specific method which would deprive the definition of the temperature of the regenerating gas of all technical contribution within the context of that claim. In the absence of any additional disclosed restricting feature to that effect, the temperature of the incoming regenerating gas was therefore considered to interact with the remaining features of the claim in such terms that it influenced the solution of the technical problem which could be understood from the application as originally filed. It followed that the condition that no missing technical contribution be provided, set out in decision G 1/93 (OJ EPO 1994, 541) and on the basis of which added matter can be considered as not extending beyond the application as filed, was not met in the case at issue. Consequently, the subject-matter of claim 1 according to the auxiliary request extended beyond the content of the application as originally filed, in violation of Article 123(2) EPC.

4. Disclaimers

4.1 Applicable law - decisions G 1/03, G 2/03 and G 2/10

Subsequent to decision G 1/03 (and G 2/03) (OJ EPO 2004, 413, 448), different opinions have been expressed in the jurisprudence of the boards of appeal on whether decision G 1/03 relates to the disclaiming of embodiments which are disclosed as part of the invention in the application as filed or whether in that situation the jurisprudence as previously established following decision T 4/80 (OJ EPO 1982, 149) continues to apply (see G 1/07, point 4.2.3). In G 2/10 (OJ EPO 2012, 376) the Enlarged Board reformulated the question referred to it, stating that the question was construed as intending to ask whether an amendment to a claim by the introduction of a disclaimer infringes Article 123(2) EPC if the subject-matter of the disclaimer was disclosed as an embodiment of the invention in the application as filed. Thereafter, the Enlarged Board defined the terms disclaimer and embodiment. The Enlarged Board stated that it appears immediately evident that the nature of the question differs according to whether only one specific embodiment is disclaimed from a generally drafted claim, or whether, on the other hand, a whole subgroup or area is disclaimed.

The Enlarged Board in G 2/10 stressed that decision G 1/03 does not support the conclusion drawn by T 1050/99 that G 1/03 also relates to disclaimers for disclosed subject-matter. Further, in G 1/03 it was not decided that an undisclosed disclaimer would be always allowable under Article 123(2) EPC. The gist of the questions referred to the Enlarged Board in case G 1/03, on which the Enlarged Board had to give an answer, was to establish whether and, if so, under which circumstances, undisclosed disclaimers could be considered allowable at all, as a matter of principle, despite the absence of a basis in the application as filed. It was this question and no more that the Enlarged Board had to answer. The wording of its answer, reading "a disclaimer may be allowable", indicated that with the criteria established in this answer the Enlarged Board in G 1/03 did indeed not intend to give a complete definition of when a disclaimer violates Article 123(2) EPC.

The Enlarged Board stated that neither decision G 1/93 nor decision G 1/03 intended to modify the general definition of the requirements of Article 123(2) EPC established in opinion G 3/89 (OJ EPO 1993,117) and decision G 11/91 (OJ EPO 1993, 125), which definition has become the generally accepted or "gold" standard for assessing any amendment for its compliance with Article 123(2) EPC. As to the criteria to be applied, the principle that any amendment to an application or a patent, and in particular to a claim, must fulfil the requirements of Article 123(2) EPC also applies to an amendment limiting the claim by disclaiming disclosed subject-matter. Therefore, as is the case for any other amendment, the test for an amendment to a claim by disclaiming subject-matter disclosed as part of the invention in the application as filed must be that after the amendment the skilled person may not be presented with new technical information. Hence, disclaiming subject-matter disclosed in the application as filed can also infringe Article 123(2) EPC if it results in the skilled person being presented with technical information which he would not derive directly and unambiguously, using common general knowledge, from the application as filed.

The point of reference for assessing an amended claim for its compatibility with Article 123(2) EPC is the subject-matter which the claim contains after the amendment. In other words, it is the subject-matter remaining in the claim after the amendment. The test to be applied is whether the skilled person would, using common general knowledge, regard the remaining claimed subject-matter as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed. This test is the same as that applied when the allowability of a limitation of a claim by a positively defined feature is to be determined. The Enlarged Board found that no convincing reason had been advanced for not applying the principles developed in the context of Article 123(2) EPC for the assessment of amendments to claims by the introduction of positive limiting features in the same manner to limitations of claims by disclaimers which disclaim subject-matter disclosed in the application as filed. The Enlarged Board stressed in its decision the importance of applying a uniform concept of disclosure.

The Enlarged Board answered the question referred to it in G 2/10 as follows:

la. An amendment to a claim by the introduction of a disclaimer disclaiming from it subject-matter disclosed in the application as filed infringes Article 123(2) EPC if the subject-matter remaining in the claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed.

lb. Determining whether or not that is the case requires a technical assessment of the overall technical circumstances of the individual case under consideration, taking into account the nature and extent of the disclosure in the application as filed, the nature and extent of the disclaimed subject-matter and its relationship with the subject-matter remaining in the claim after the amendment.

By decision T 1068/07 dated 25 June 2010 (OJ EPO 2011, 256), the board referred a question to the Enlarged Board which was decided under G 2/10 (OJ EPO 2012, 376). Decision T 1068/07 of 7 March 2012 is the decision taken by the board following the answer given by the Enlarged Board in G 2/10.

The board pointed out that, in order for it to decide in the case at issue whether the main request fulfilled the requirements of Article 123(2) EPC, it was necessary to pose the following questions; i) was the subject-matter of the disclaimer introduced in claim 1 of the main request - either explicitly or implicitly - directly and unambiguously disclosed in the application as filed, and ii) was the subject-matter remaining in claim 1 of the main request after the introduction of the disclaimer in this claim - either explicitly or implicitly - directly and unambiguously derivable from the application as filed?

In view of G 2/10 the board requested the appellant to clarify its requests. The board acknowledged that the disclaimer currently in claim 1 of the main request was disclosed in the application as filed. Turning to question ii), the board also concluded in the case at issue that it was answered in the affirmative. Therefore the criteria set out in point 1a of the Order of G 2/10 were met by the disclaimer present in claim 1 of the main request and accordingly the requirements of Article 123(2) EPC were fulfilled.

4.2 Decisions applying the criteria established by G 1/03 and G 2/03

In T 477/09, claim 1 was modified by addition of a negative feature or disclaimer with a view to restoring its novelty over document D1. It was undisputed that there was no basis for the disclaimer in the application as filed. The board observed that two conditions relating to the wording of disclaimers had been established in points 2.2 and 2.4 of the order made in G 1/03 and that those two conditions were equally applicable. The patent proprietor therefore could not be considered to have any room for manoeuvre in wording the disclaimer and thereby defining its scope: to satisfy the conditions set out in G 1/03, a disclaimer could not remove more than was necessary to restore novelty.

In the case at hand, the board found that the scope of the disclaimer was greater than the actually novelty-destroying disclosure in D1. This meant that it did not meet the condition in point 2.2 of the order as read in conjunction with point 3 of the reasons for G 1/03. The disclaimer in auxiliary request IV was therefore not allowable and was refused accordingly (see also Chapter III.A.2).

In T 1695/07, claims 1 to 8 of the main request were found by the board to be directed to a method for treatment of the human body by surgery which is excepted from patentability under Article 53(c) EPC. Claim 1 of auxiliary request 2 included the feature "wherein the process is not a method for treatment of the human or animal body by surgery", i.e. a disclaimer.

Concerning the admissibility of a disclaimer excluding subject-matter not eligible for patent protection, the board in this case first stressed that, with reference to G 1/03 (OJ EPO 2004, 413), the requirements of Article 84 EPC are also applicable to claims containing disclaimers. A clear delimitation and distinction between excepted surgical applications and possibly allowable non-surgical applications of the claimed process requires that the two methods be distinct, i.e. separable, which means that they must be of a different nature and may be carried out in different ways. In the board's view, it could not be seen how the claimed process would work without the surgical steps involved. The board concluded that the requirement of clarity was not met in the case at issue and that auxiliary request 2 was therefore not allowable (see also Chapter I.A.2.1).

B. Article 123(3) EPC

1. General issues

In T 177/08, with reference to Article 123(3) EPC, the board referred to Article 69, second sentence, EPC, which provides that the description and the drawings are to be used to interpret the claims. The board said that it had therefore to be decided whether said interpretation of the claims by the content of the description was limited to cases where the claims were in need of interpretation, e.g. because of functional or unclear features, or whether it also applied to the case at issue, where a well-known and generally accepted meaning of a term was overthrown and replaced by a new definition given in the description.

The appellant cited decisions T 1321/04 and T 190/99 in this context. In contrast to decision T 190/99, where a term used in its usual meaning did not make technical sense, formula II according to claim 1 of the contested patent did not include any subject-matter which was illogical or did not make technical sense if the term "alkyl" was used in its usual and well-known meaning. T 1321/04 was not concerned with the issue of determining the scope of protection but how a term should be interpreted in the assessment of novelty.

In the case at issue the situation was that the meaning of the feature in question was generally accepted, perfectly understandable per se, and unambiguously defined by IUPAC, whom the skilled person acknowledged as the competent authority in this context. The skilled person therefore had no need to consult the description for a definition of "alkyl". The board was of the opinion that the second sentence of Article 69 EPC did not apply to cases where an unambiguous and generally accepted definition of a term figuring in the claims was to be superseded by a different definition found in the description. If it was intended that a term which was in no need of any interpretation be given a new meaning, then the definition for this new meaning had to be put into the claims. Third parties could not be expected to check every single term of the claims for a potentially different meaning that might be hidden somewhere in the description.

As a consequence, the board concluded that the subject-matter of the main request extended the protection conferred and did not meet the requirements of Article 123(3) EPC.

In the case underlying T 547/08, the invention concerned dialysis machines with touch screen user interface. The board stated that the appellant/opponent's arguments relating to the rights of the patent proprietor to sue for indirect or contributory infringement were not relevant to the issue of extension of the scope of protection under Article 123(3) EPC. In G 2/88 (OJ EPO 1990, 93) it was clearly ruled that it is not necessary to consider the national laws of the contracting states in relation to infringement and that this issue is not relevant when deciding upon admissibility of an amendment under Article 123(3) EPC. With respect to the question of an extension of the scope of protection under Article 123(3) EPC, it is, rather, appropriate to take into account the fact that the protection conferred by a patent is determined by the terms of the claims, and in particular by the categories of the claims and their technical features, in accordance with Article 69(1) EPC and its protocol (G 2/88, OJ EPO 1990, 93). According to the latter, Article 69 EPC should be interpreted as a compromise between fair protection for the patentee and a reasonable degree of legal certainty for third parties. The description and drawings may be employed to a certain extent to interpret the claims, rather than only for the purpose of resolving a possible ambiguity in the wording of the claims.

Further, in the board's view, the decisions cited by the appellant to support its line of argument were not applicable to the situation. The case underlying T 352/04 related to a change from a substance to a combination of the substance and a device, which was regarded as a change of the claim category. In the case at issue, however, there was no such change of category. T 867/05 related to a change from "a membrane material for use in dialysis ...", i.e. a substance A for use in a method X, to "an artificial kidney in which there is used a membrane material...", i.e. a combination of a device B and the substance A, which was also a situation quite different from the case before the board.

The appellant's argument that the scope of protection had been shifted to an "aliud", i.e. from a user interface and screen display apparatus to a dialysis machine, and was thus in breach of Article 123(3) EPC, was not accepted by the board. The board observed that a change from a (granted) claim, directed to a first physical entity, to a second, more complex physical entity (an "aliud") in opposition proceedings is a common and usual procedure entirely in line with the requirements of Article 123(3) EPC: adding one or more limiting technical features to a claimed device naturally renders the claimed entity more complex and results in a restriction rather than an extension of scope.

The invention in T 1172/08 concerned a process for the preparation of protein mutants having lower allergenic response in humans. The interpretation of the protection conferred by a patent according to Article 69 EPC was in general not one of the duties of the boards of appeal (cf. T 175/84). For the purpose of establishing whether the amendments of the main request fell foul of the provisions of Article 123(3) EPC, it was however necessary to do so. The board stated that it was evident, and not contested by the parties, that obtaining a solution of monocyte cells from a blood sample was not the same as obtaining a solution of dendritic cells from a blood sample. Thus, claim 1 as granted and claim 1 of the main request, when read on their own, provided protection for different subject-matter.

Appellant I/patent proprietor agreed that normally such a shift in the extent of protection would not be allowable. It argued, however, that the case at issue was very particular because the claims as granted did not embrace the subject-matter of the only example of the patent specification. It had therefore to be established whether the amendments to claim 1 resulted in an extension of the scope of protection conferred by the patent as a whole.

Appellant I concluded that what determined the scope of protection in the case at issue was not the literal meaning of the term dendritic cells. Since the literal meaning of the term dendritic cells was not consistent with Example 1, on a proper construction of claim 1, there was no extension of the scope of protection.

The board had no doubts and the parties did not dispute that dendritic cells and monocytes are different cell types characterised by different features. Both cell types can be distinguished by morphological features as well as phenotypic and molecular markers, and the isolation of enriched dendritic cell fractions from blood samples was for instance disclosed in prior-art document D8. Thus, the skilled person would a priori not have had any reason to read a different technical meaning into the term "obtaining from a blood sample a solution of dendritic cells". Reading appellant I's interpretation into claim 1 would require the skilled reader to completely ignore the wording of granted claim 1, which per se was not technically meaningless, with the consequence that the wording of claim 1 would merely serve as an empty shell.

This was clearly not in the sense of Article 69 EPC nor in the sense of the protocol on its interpretation. Moreover, the interest of third parties in legal certainty would be completely ignored, if appellant I's interpretation were found to be acceptable.

The board came to the conclusion that the main request did not meet the requirements of Article 123(3) EPC.

In T 260/10, the feature "having at least one optical display unit and in particular at least one operating unit ..." in claim 1 as granted had been replaced and the words "and in particular at least one operating unit" thereby deleted.

The board found that it generally depended on the specific context whether a feature following the expression "in particular" had to be regarded as optional. As a rule, an optional feature in the main claim was one which was not essential to the claimed teaching but instead served as an example illustrating other features.

The wording used in claim 1 as granted meant that the claimed domestic appliance included not only an optical display unit but also an operating unit, the expression "in particular" having to be construed in the sense of "above all" or "especially". The operating unit was specified not as an example of a possible component, but rather as an essential part of the domestic appliance. In this case, "in particular" gave special emphasis to the operating unit as part of the appliance.

The scope of protection was limited by this non-optional feature and its deletion therefore infringed Article 123(3) EPC.

2. Change of claim category

T 1635/09 (OJ EPO 2011, 542) was concerned with the conversion of a use claim into a "Swiss-type" claim. In this case, claim 1 of auxiliary request 23 differed from claim 1 as granted in that the use claim originally granted had been converted into a Swiss-type claim, i.e. a claim directed to the use of a substance or composition for the production of a medicament for a specific therapeutic application. According to the boards' settled case law, account must be taken of the granted claims as a whole in assessing whether the scope of protection has been extended by such an amendment. The board therefore had to examine whether it was compatible with the requirements of Article 123(3) EPC to reword a claim directed to the "use of an oral dosage form comprising ... for contraception ..." as a claim for the "use of a combination product which comprises ... to produce an oral ... dosage form for contraception ...".

To do so, it was essential to establish whether the Swiss-type claim was to be construed as a claim directed to (a) the use of a substance or composition for a specific purpose or (b) the manufacture of a medicament. Citing G 5/83 (OJ EPO 1985, 64) and G 2/88 (OJ EPO 1990, 93), the board ruled that the conversion of a claim for the use of a substance or composition for a specific purpose into a Swiss-type claim or a purpose-related product claim within the meaning of Article 54(5) EPC resulted in an extension of the scope of protection (see also Chapter I.A.2.2..

C. Rule 139 EPC

The invention in case T 2230/08 concerned a method of regenerating a catalyst/absorber. The modification in claim 1 of the main request that the temperature range of 121°C to 399°C defined the regeneration temperature rather than the temperature of the incoming stream of reducing gas was, in the appellants/patent proprietors' view, a mere correction under Rule 139 EPC of claim 1 as granted.

The board stated that it was not in dispute between the parties that the temperature range defined in the first step of claim 1 as granted was not disclosed in the application as originally filed. The range of 121°C to 399°C (250°F-750°F) was clearly defined in claim 1 as granted as the temperature of the incoming stream of regenerating gas. The step of providing a gas at a specific temperature was technically sensible for the skilled person. The appellants argued that the only temperature that mattered was not that of the incoming stream of regenerating gas, but the temperature at which regeneration was carried out, which was the temperature of the catalyst/absorber. The board remarked that there was no disclosure in the patent as granted that the only temperature that mattered was the reaction temperature and not that of the gas; on the contrary. The definition of the range of temperature for the incoming stream of regenerating gas in claim 1 did not appear to the skilled person as an error, even less as an obvious one. Furthermore there was no evidence that an error of transcription occurred in the case at issue; on the contrary. Consequently, the request for correction under Rule 139 EPC was rejected and the range of temperature from 121°C to 399°C in claim 1 as granted had to be read by the skilled person as defining the temperature of the incoming stream of regenerating gas, but not that of the regeneration reaction. It was not disputed that claim 1 of the main request would not fulfil the requirements of Article 123(3) EPC, should the request for correction under Rule 139 EPC not be allowed (see also Chapter III.A.3).

IV. DIVISIONAL APPLICATIONS

1. Pending earlier application

In J 4/11 (OJ EPO 2012, ***) the question arose whether an earlier application was still pending within the meaning of Rule 25 EPC 1973. The case concerned an earlier application which had been deemed to be withdrawn for non-payment of a renewal fee, and where the applicant had requested re-establishment of rights in respect of the time limit for payment of the renewal fee. The request for re-establishment concerning the earlier application was later finally refused but the applicant had meanwhile filed a divisional application.

The board held that the mere existence of the right to file a request for re-establishment of rights in respect of a deemed withdrawn application did not mean that the application was still pending while the period for filing such a request was running. Likewise, the fact that a request for re-establishment of rights was actually filed could not make the application become pending again. The board stated that the point in time when the application was deemed to be withdrawn was the point when the due time for payment of the renewal fee expired; the loss of rights occurred on the expiry of the time limit that had not been observed and, as such, was final in itself. Filing a request for re-establishment did not provisionally revive a deemed withdrawn application. The effect of filing a request for re-establishment was merely to make a reversal of the deemed withdrawal possible. The effect of an unsuccessful request for re-establishment was that the application remained deemed withdrawn.

The case turned on whether the applicant enjoyed substantive rights in respect of the earlier application which were (still) subsisting when the later application was filed (see G 1/09, OJ EPO 2011, 336). The substantive rights under Article 64 EPC identified by the Enlarged Board in G 1/09 were held not to be still subsisting. As to other possible rights, the right of the inventor under Article 60 EPC was held to be no longer subsisting when the divisional application was filed, since the right ceased to exist if and when the application was finally refused, or was withdrawn or deemed to be withdrawn. The board rejected the appellant's argument that the right to request re-establishment was a substantive right.

The board concluded that an application which had been deemed to be withdrawn for non-payment of a renewal fee was not pending within the meaning of Rule 25(1) EPC 1973 in the period for filing a request for re-establishment of rights under Article 122 EPC 1973 in respect of such non-payment, or in the period after which such a request was filed in the event of such request being refused.

In J 24/10 the Legal Board had to decide whether the publication of the mention of the grant of the patent in the European Patent Bulletin excluded the pendency of the earlier application within the meaning of Rule 36(1) EPC for this entire day or only as from 14.00 hrs, when the European Patent Bulletin became publicly available via the internet.

The Legal Board noted that the Enlarged Board of Appeal had decided in G 1/09 (OJ EPO 2011, 336) that "the pending status of the European patent application normally ceases on the day before the mention of its grant is published since from that point in time substantive rights under the EPC are no longer derived from the patent application, but now derive from the granted patent". In J 7/04 the Legal Board had held that with the mention of the grant of the earlier patent, the applicant and the EPO no longer exercised any influence over the patent, which became autonomous and had to be treated as though it had been conferred by a national authority in accordance with Article 64(1) EPC. In J 24/10 the Legal Board added that according to the wording of Article 97(4) EPC 1973 (Article 97(3) EPC) the smallest time unit was the date (German version: der Tag; French version: la date) as such and not an hour or the chronological order of events on a specific date. Furthermore, Article 64(1) EPC stipulates that the date of the publication and not the event of publication as such was the precondition for conferring the protection provided for by that article. Apparently, the lawmaker's intention was to implement an incontestable and foreseeable point in time at which jurisdiction passes to the national instances and at which the patent confers on its proprietor the rights defined in Article 64(1) EPC in relation to third parties. Pendency was therefore excluded for the entire day of the mentioning of the grant of the earlier patent in the European Patent Bulletin. In the case at issue the earlier application was thus no longer pending within the meaning of Rule 36(1) EPC.

In J 19/10 the application was filed as a divisional application on the same day as the publication of the mention of grant in respect of the earlier European patent application. The board confirmed the case law that, where the earlier application proceeded to grant, an application was pending up to but not including the date of publication of the mention of grant in the European Patent Bulletin.

In the case at issue the applicant contended, however, that a postal strike took place in the Munich area at least on the day before the filing of the divisional application. The applicant consequently assumed that the divisional application should be deemed to have been filed in due time according to Rule 134(2) EPC, which reads in its relevant part: "If a period expires on a day on which there is a general dislocation in the delivery or transmission of mail ..., the period shall extend to the first day following the first day of the interval of dislocation ...". The question before the board was whether Rule 134(2) EPC was applicable in relation to Rule 36(1) EPC; this would only be the case if the wording "to any pending earlier European patent application" in Rule 36(1) EPC imposed a period, i.e. a time limit. The Legal Board rejected this argument, noting that the boards of appeal had previously ruled that the wording "to any pending earlier European patent application" in Rule 36(1) EPC did not set a period/time limit, but rather set a condition; see e.g. J 10/01, J 24/03 (OJ EPO 2004, 544), J 18/04 (OJ EPO 2006, 560), J 7/05 and G 1/09 (OJ EPO 2011, 336). The Legal Board held that no legal consequences could be inferred from the replacement of "time limit" in Rule 85(2) EPC 1973 by "period" in Rule 134(2) EPC. In this regard reference was made to J 18/04 (OJ EPO 2006, 560) where the board had found that in Rule 83 EPC 1973 ("Calculation of time limits") the term period was the only logical substitute for the term time limit throughout the wording of the rule.

2. Content of the earlier application as filed

T 2175/09 concerned a patent granted on a divisional application, which was part of a sequence of divisional applications (application at issue, parent application, grandparent application, and root application). A feature had been omitted in the grandparent application as filed but had been reintroduced into the grandparent application in examination proceedings before it was eventually granted. The opposition division revoked the patent granted on the divisional application at issue, finding that the subject-matter of the opposed patent was not directly and unambiguously derivable from what was disclosed in the grandparent application as filed.

Before the board, the appellant did not contest that Articles 76(1) and 100(c) EPC 1973 prohibited adding subject-matter beyond the content of the immediately preceding application from which a divisional application was derived. The appellant also accepted that it was the purpose of these articles to prohibit extending the subject-matter beyond the root application as filed. However, the appellant argued that an infringement of Article 76(1) EPC 1973 in the case of an intermediate higher-generation divisional application (here the grandparent application) did not constitute a ground for opposition under Article 100(c) EPC 1973. The board held that Article 100(c) EPC 1973 gave the public the possibility of inter alia opposing a patent on the ground that its subject-matter extended beyond the content of the earlier application as filed if an infringement of Article 76(1) EPC 1973 had been overlooked in examination proceedings. This also applied in the particular case of an infringement of Article 76(1) EPC 1973 in an intermediate higher-generation divisional application. The grandparent application too is "the earlier application" within the meaning of Article 100(c) EPC. The board added that the amendment before the examining division which had reintroduced the omitted feature in the grandparent application could not be deemed to have retroactively become part of the content of the grandparent application as filed. In the case at issue the board concluded that the subject-matter of claim 1 of the opposed patent extended beyond the content of the earlier application as filed in that it contained subject-matter which had not been disclosed in one of the preceding (earlier) applications as filed, namely the grandparent application. Therefore the opposition division's decision to revoke the patent was correct.

3. Filing date

In T 600/08, the patent in suit had been granted on the basis of a divisional application. The applicant named in that divisional application when it was filed differed from the applicant which had filed the parent application. The latter had therefore requested that the applicant name in the divisional application be corrected (under Rule 88 EPC 1973) on the ground that the wrong firm had been named as applicant by mistake. The Receiving Section had granted its request.

Before the board, the appellant (opponent) asserted that the request for correction under Rule 88 EPC 1973 ought not to have been granted and that the divisional application was therefore invalid. As a result, the filing date relevant for the patent at issue was the date of receipt of the application on which it was based. This meant that the content of the parent application was prejudicial to the novelty of that application.

The board rejected this line of argument and confirmed that a patent application filed as a divisional application could only be accorded the filing date of the parent application. As the Enlarged Board of Appeal had already held, "under the EPC the filing date of the root application is the only filing date which can be attributed to a divisional application, by way of the legal fiction contained in Article 76(1), second sentence, second half sentence, EPC .... There is no room under the EPC for a divisional application to have as filing date the date of its actual filing with the EPO" (see G 1/05). The board thus found that there were only two alternatives for a European patent application filed as a divisional application: either it was not treated as a divisional application, in which case the grant procedure would not even start, or it was treated as a divisional application, in which case it could only be accorded the filing date of its parent application. Since the application on which the patent was based had been filed as a divisional application and then treated as such, there was no choice but to accord it the filing date of the parent application. The latter application therefore could not be considered to constitute prior art prejudicial to the patent's novelty.

V. PRIORITY

1. Identity of invention

In case T 110/07 priority document P1 disclosed, as a thickness for the sodium ion diffusion barrier layer (SIDB), the ranges of 2 to 50 nm and 2 to 18 nm and also, in the examples, individual values for SnO2 CVD-deposited SIDB layer thickness of 101 nm, about 100 nm, 434 nm, and of 50 nm for SnO2 layers obtained by spray pyrolysis. According to the board, P1 thus failed to disclose the range in the feature of claim 1 "sodium diffusion barrier layer … having a thickness of at least 10 nm". Nor, in view of G 2/98, was either the claimed lower limit of 10 nm or the open-ended range of ≥ 10 nm directly and unambiguously derivable from P1. The priority date was therefore not valid.

The board considered the opposition division's application of a "novelty test" based on the concept of overlapping ranges (which had led it to conclude that the priority was valid) to be inappropriate in view of G 2/98 itself, because in the case in hand there was no overlap, but rather a generalisation of ranges. While G 2/98 stated that "priority claims should not be acknowledged if the selection inventions in question are considered "novel" according to these criteria", i.e. those applied by the EPO in assessing novelty of selection inventions over the prior art, it did not automatically follow from said statement that priority claims should be acknowledged if the selection inventions in question were considered not "novel". The board drew attention in this context to T 1233/05, T 230/07 and T 1130/09, according to which the demonstration of a technical effect over a sub-range is not decisive for acknowledging novelty. A sub-range must be novel per se.

VI. RULES COMMON TO ALL PROCEEDINGS BEFORE THE EPO

A. The principle of the protection of legitimate expectations

1. Responsibility for filing valid authorisation

T 267/08 concerned a change of representation after the notification of the decision of the opposition division. A document was filed per fax confirming that responsibility for the conduct of the appeal had been transferred to the new representative. The change of representative was entered in the Register of European Patents and both the previous representative and the new representative were informed accordingly. Realising that the document filed failed to name the correct opponent, the board informed the new representative that the required authorisation had not been provided. The new representative sent the authorisation per fax but did not send the original.

The board held that professional representatives must be expected to be acquainted with all notices published by the EPO which are relevant to patent practice. The new representative should have realised that the Decision of the President of the European Patent Office dated 12 July 2007 on the filing of authorisations (special edition No. 3of OJ EPO, L.1) explicitly required an original version of the authorisation to be filed and that the decision of the President of the European Patent Office dated 12 July 2007 concerning the filing of patent applications and other documents by facsimile (special edition No. 3of OJ EPO, A.3) forbade the filing of authorisations by fax. The fact that the new representative had previously been notified that the change of representative had been registered should not have misled him into believing that a faxed version of an authorisation would suffice. Only a "fundamentally inexcusable ignorance of the law" (J 5/02) could lead him to this conclusion. Furthermore, the board did not accept that, in accordance with the principle of good faith, a warning of the failure to provide the original should have been issued. The principle of good faith did not impose an obligation on a board to warn a party of deficiencies within the area of the party's own responsibility (G 2/97, OJ EPO 1999, 123). The board was under no obligation to warn a party of deficiencies in the filing of an authorisation; rather, the party itself had the responsibility to take all necessary steps to avoid a loss of rights. Responsibility for filing a valid authorisation could not be devolved to the board. The board concluded that the principle of protection of legitimate expectations could not be relied upon in the case before it.

2. Failure to observe the deadline for opposition

In T 1644/10, the EPO had published an incorrect patent specification B1 and subsequently corrected it as B9. The appellant had relied on the accuracy of the published specification B1 and consequently failed to file notice of opposition within the prescribed period.

The board observed that the Enlarged Board of Appeal had repeatedly found that the principle of protection of legitimate expectations was recognised in the EPC contracting states. However, there was, in the board's view, no uniform definition of it as a "procedural principle" in the case law of either the boards or the member states and it could not be directly applied as a specific rule of procedure under Article 125 EPC 1973. Its applicability was therefore not unlimited and always had to be assessed in the light of the specific procedural situation. Thus, there also did not exist a generally recognised principle in the contracting states that citing "official" misinformation as justification for a failure to observe the deadline for seeking legal redress in an inter partes procedure could result in the setting of a new period to begin after "official" correction of the information or in its being deemed that the deadline had not been missed.

Whether the protection of legitimate expectations could be applied in an inter partes procedure where there had been a failure to meet the opposition deadline was subject to a weighing-up of interests. There was no general rule that the patentee's legitimate expectation that the grant decision had become final had to be considered subordinate to the opponent's legitimate expectation that the content of the published patent specification was correct. That would run counter to the rule of equal procedural treatment of the parties.

In the case at hand, there were no circumstances which could have justified giving the legitimate expectation of the appellant (opponent) that the patent specification was correct priority over the patentee's legitimate expectation that the grant decision was final, because - unlike in e.g. G 5/88 (OJ EPO 1991, 137) - no notice of opposition of any kind had been filed within the period for opposition. Accordingly, the appellant could not rely on applicability of the principle of legitimate expectations in relation to its failure to meet the opposition deadline. The opposition had therefore been filed belatedly (see also Chapter VII.D.1.2).

B. Right to be heard

The appellant (patent proprietor) in T 2415/09 argued before the board that its right to be heard had not been respected during opposition proceedings. The new documents and experiments submitted by the respondent had only been transmitted to the appellant six weeks before the oral proceedings before the opposition division. According to the appellant, this had left no time for a response as it would have had to present counter-experiments. On the day of the oral proceedings before the opposition division, the European patent had been revoked on the basis of the new evidence submitted by the respondent.

The board said it could not comment on the exact period needed to conduct comparative experiments. It observed however that under Rule 132(2) EPC, for instance, the periods specified by the EPO may not be less than two months and that they may be extended upon request. In general, the period for responding to substantive matters is set at four months, with extension to six months possible upon request, and a request for a longer extension can be allowed in special cases, such as the need to carry out experiments. Even if they did not apply in the case in point (Rule 116(1) EPC), these periods showed that a party could not be required to conduct comparative experiments in a period as short as six weeks. The board concluded that the opposition division, by basing its decision on the new evidence without giving the appellant an opportunity to respond with the counter-experiments it considered necessary, had failed to respect its right to be heard in contravention of Article 113(1) EPC, and therefore had committed a substantial procedural violation.

C. Oral proceedings

1. Examining division's decision on venue of oral proceedings

In T 689/05 the examining division had refused, without giving any reasons, the applicant's requests to transfer the oral proceedings to Munich and to reimburse the travel costs to The Hague. On appeal the appellant requested a remittal to the department of first instance.

The board considered that the provisions of Article 116 EPC 1973 in conjunction with Article 10(1), (2)(a) and (b) EPC 1973 formed the legal basis for conducting oral proceedings before the examining division in The Hague (see also T 1012/03). As the appellant was summoned in proper form, in sufficient time before the oral proceedings and to the correct place, the right to be heard in oral proceedings (Articles 113(1) and 116(1) EPC 1973) was not violated in the case at issue. The board nevertheless agreed with the appellant that the lack of reasoning (Rule 68(2), first sentence, EPC 1973) amounted to a procedural violation. The board was not convinced, however, that this procedural violation constituted a fundamental deficiency in the first-instance proceedings within the meaning of Article 11 RPBA justifying setting aside the decision under appeal and remitting the case to the examining division. A fundamental deficiency was not caused by all procedural violations but rather by a substantial procedural violation, which was an objective deficiency affecting the entire proceedings (J 7/83, OJ EPO 1984, 211). In the case at issue, the established procedural violation did not affect the entire proceedings before the examining division. The board stated that the reasons given for refusing the application on substantive grounds complied with Rule 68(2), first sentence, EPC 1973. In addition, the appellant and the board had been in a position to examine and discuss the reasons for the decision to refuse the application of the examining division, and the missing part of the reasoning of the impugned decision had no influence on that discussion. The board added that the issues of not transferring the oral proceedings and not paying the travel costs were rather a subsidiary matter in the case before it. Moreover the board was in a position to take a decision on the main issue of the appeal at the oral proceedings. Therefore, it would have been disproportionate to set aside the entire impugned decision because of the partial lack of reasoning of the decision under appeal.

In T 933/10 the applicant requested that oral proceedings be held in Munich instead of The Hague. The examining division issued a communication stating that it was "not foreseen" for an examining division which was located in Rijswijk to travel to Munich for oral proceedings.

The board recalled that Rule 111(2) EPC (corresponding to Rule 68(2) EPC 1973) required that decisions of the EPO which are open to appeal be reasoned. The board concluded that the communication of the examining division could not be regarded as containing any reasons at all in support of the conclusions reached. In addition, the examining division had failed to take into account an argument presented by the applicant in support of this request, namely that the patent activities of the client were concentrated in Munich. The applicant had thus de facto been denied the right to be heard, which was contrary to Article 113(1) EPC. Each of these violations justified referral back to the department of first instance and reimbursement of the appeal fee.

2. Request for oral proceedings

T 1050/09 concerned a case in which only the opponent had requested oral proceedings before the opposition division; the patent proprietor itself had not. Finding in favour of the opponent, the opposition division revoked the patent without appointing oral proceedings. On appeal the appellant (patent proprietor) alleged a substantial procedural violation, arguing that a request for oral proceedings had not been necessary since the appellant could rely on the opponent's (unconditional) request.

The board rejected the appellant's argument. It held that the right to oral proceedings regulated by Article 116(1) EPC formed a substantial part of the right to be heard granted by Article 113(1) EPC. From this it followed that non-compliance with a request for oral proceedings deprived the party of an important opportunity for presenting his case in the manner he wished and using the possibilities open to him under the EPC. However, Article 113(1) EPC did not confer a formal position on a party to proceedings before the EPO but served to ensure fair conduct of those proceedings. A successful party had no reason to doubt the correctness of the procedure leading to the decision in its favour. In the case of a request for oral proceedings by a party the opposition division had no power to issue a decision adversely affecting such party without first appointing oral proceedings (see T 686/92 and T 795/91). In the case at issue, however, in view of the positive conclusion in favour of the opponent the opposition division had reached, oral proceedings at the unconditional request of the opponent would have served no purpose. The opposition division had also informed the parties of its opinion that revocation of the patent could be expected. Having received this communication without summons to oral proceedings it was up to the appellant to make a clear request for oral proceedings.

In T 1829/10 the applicant's response to the examining division's first communication was that a hearing would be useful if basic concerns regarding patentability persisted. The examining division refused the patent application without holding oral proceedings.

The board of appeal decided that the absolute right to oral proceedings under Article 116(1) EPC had been violated. The wording used by the applicant included a request for oral proceedings under Article 116(1) EPC. The term "hearing" was synonymous with "oral proceedings". Moreover, even though the applicant had not used the term "request", it was clear, on a fair and reasonable reading, that the chosen wording could not mean anything other than that the applicant wanted to be heard once more before the examining division came to its decision and thus wanted, i.e. requested, a hearing or oral proceedings. Whether or not the formal term "request" was used was immaterial in this context (see also T 263/91). What mattered was the will and intention of the applicant, which was clearly and unmistakably established in the case at issue. If the examining division had had even the slightest doubt in this regard, it ought to have contacted the applicant to clarify whether or not it was actually seeking oral proceedings under Article 116(1) EPC, as this was an absolute right of the parties in proceedings before the EPO (see T 668/89; T 95/04). The applicant's use of the expression "sachdienlich" (useful) in a request for oral proceedings, as opposed to a request for interview, implied that the examining division had no discretion with respect to its grant.

3. Change of date of oral proceedings

In T 1610/08 the respondent's representative requested that the oral proceedings before the board be postponed as he had already firmly booked a holiday. The representative could not be substituted because the party had built up a long-standing relationship of trust with him, and also because none of his partners knew anything about the opponent's business or technology and so bringing any one of them up to speed would cause additional costs to the party. Lastly, his knowledge of the earlier proceedings before the opposition division was unique and irreplacable.

The board noted that according to Article 15(2) RPBA, it had discretion to allow, exceptionally, a change of date for oral proceedings. The notice of the Vice-President of Directorate-General 3 dated 16 July 2007 concerning oral proceedings before the boards of appeal of the EPO (special edition No. 3 of OJ EPO 2007, 115) lists holidays which have been firmly booked before the summons as a potential serious reason for a representative to request a change of date for oral proceedings (see point 2.1 of the notice). Point 2.1 of the notice had to be balanced against point 2.3 of the notice, according to which every request for fixing another date for oral proceedings should contain a statement why another representative within the meaning of Articles 133(3) or 134 EPC could not substitute for the representative who was unable to attend. Point 2.3 of the notice thus made it clear that substitution of a representative was a possible alternative to postponement.

The board was of the opinion that the circumstances indicated by the respondent with respect to point 2.3 of the notice were in fact common to all cases in which substitution was involved. If point 2.3 of the notice was to be interpreted to mean that the reasons mentioned by the respondent would fulfil the criteria for excluding the possibility of a substitution, then the provision could never be applied and would be devoid of any meaning. This could not reasonably be considered to have been the intention of the drafter. In the board's view, only extraordinary circumstances, i.e. those which were not common to every case of substitution, should be accepted. The submitted reasons did not amount to extraordinary circumstances. The board thus declined to postpone the oral proceedings.

In T 584/09 the board rejected a request for postponement of oral proceedings, citing as grounds points 2.1 and 2.3 of the notice of the Vice-President Directorate-General 3 dated 16 July 2007. The reason for the appellant's request was merely that one of his additional representatives had to appear at the Court of Appeal of England and Wales on that day; the authorised representative could however attend the oral proceedings. The request for postponement furthermore failed to provide any explanation as to why the additional representative, who had not hitherto been involved in the proceedings and for whom no authorisation had yet been issued, could not be replaced by another representative. The board thus did not consider the unavailability of this additional representative on the relevant date as a serious substantive reason to justify a new date being set.

4. Telephone call at appeal stage

In T 263/07 the appellant had requested that the rapporteur of the board telephone the appellant's representative to discuss whether the application could be found in order for grant in accordance with one of the appellant's requests prior to the oral proceedings so that the oral proceedings could be cancelled.

The board recalled that, as a matter of principle, the EPC foresees the absolute right to oral proceedings under Article 116(1) EPC 1973, but not the right to a telephone interview. As to appeal proceedings more specifically, Articles 4 and 5 RPBA provide that certain steps in the proceedings may be taken by the rapporteur. Where this is the case the rapporteur's duties consist of either ensuring, under the board's supervision, that the procedural rules or the directions of the board of appeal are complied with by the parties, or, where it comes to substantive matters (Article 5(3) RPBA), of acting on behalf of the board. This, in other words, implied that the other members of the board had been informed and put in a position to give an informed opinion on the action to be taken. To this end it was important that the same case was presented to all the board's members. For one of the board's members to be privy to evidence or arguments not available to the other members would be a breach of the principle of collective decision-making and in conflict with Article 21 EPC 1973 (see T 1109/02). Since the requested telephone interview could have led the rapporteur to take a position on an issue where a collective decision would have been required, or to commit the board without preliminary discussion, the request was refused as not being compatible with the above-mentioned principle and rules governing appeal proceedings.

In T 1984/07 the appellant requested, in advance of the oral proceedings, that he be contacted by telephone should neither of the requests on file be considered to be substantially allowable "such that an allowable set of claims may be prepared before the date of the oral proceedings". As announced in advance, the appellant did not attend the oral proceedings.

Recalling that there was no right to an informal telephone consultation, the board noted that under Rule 100(2) EPC the board invites the parties "as often as necessary" to file observations. However, in view of the fact that oral proceedings had been appointed, a further opportunity to present observations or requests did not need to be given outside this framework, the oral proceedings providing the necessary platform for this exchange of opinions. The board did not rule out that there may be circumstances in which a telephone call may be appropriate: for example, if only minor objections remain which could be easily attended to by straightforward amendments. However, in the case at issue, the objections were of such nature that any further amendments were likely to entail more than just a simple modification to the wording of the claims or a straightforward adaptation of the description.

D. Re-establishment of rights

1. Competence of board to decide on request

T 1973/09 concerned a case in which the appellant (applicant) had requested re-establishment of rights in respect of the time limit for filing a notice of appeal. The formalities officer acting on behalf of the examining division had allowed the applicant's request. In the interlocutory revision (Article 109 EPC) the examining division had concluded that the appeal was admissible but not well founded.

The board recalled that, under Rule 136(4) EPC, the department competent to decide on a request for re-establishment of rights was the department competent to decide on the omitted act. In the case at issue the omitted act was the filing of the notice of appeal, which was to be carried out within the time limit defined under Article 108 EPC. The department competent to decide whether the appeal was inadmissible for non-compliance with Article 108 EPC was, under Rule 101(1) EPC, the board of appeal. Therefore only the board was entitled to decide upon the request for re-establishment of rights.

The board stated that Article 109(1) EPC, which empowers the department of first instance in ex parte proceedings to set aside its own decision if it considers an appeal to be "admissible and well founded" (emphasis added by the board), provided an exception to the principle of the general devolutive effect of the appeal, in order to allow interlocutory revision. However, the department of first instance in the case at issue had followed neither Article 109(1) EPC nor the Guidelines for Examination, which indicate that the request for re-establishment was to be considered by the competent department only if interlocutory revision was to be granted (Guidelines E-VIII, 2.2.7, version of April 2010), which in the case at issue it was not. The department of first instance had decided upon the request for re-establishment of rights only to conclude that the appeal was admissible, but not well-founded (emphasis added by the board). The decision of the department of first instance was thus ultra vires and was therefore set aside by the board.

2. Admissibility of requests for re-establishment of rights

In J 21/10, the board had to rule on the admissibility of a request for re-establishment of rights. Under Rule 136(1), first sentence, EPC, such a request must be filed within two months of removal of the cause of non-compliance. The board found that, in cases of a request for re-establishment of rights, the existence of some factor having a causal nexus with the failure to observe the deadline in question was a procedural requirement and, as such, a prerequisite for any decision on the merits, and therefore had to be verified when examining admissibility. The same applied where such causal factor was denied, as in the case in hand, on legal grounds because the error leading to the failure to perform a procedural act subject to a deadline ought to have been discovered by a person exercising due care. Where the cause asserted in a request for re-establishment of rights consisted of an error but could be deemed to have been removed before expiry of the non-observed deadline because the error was attributable to a breach of the duty of care imputable to a responsible party, such removal resulted in the inadmissibility of the request.

In the case in hand, the board held the request inadmissible. The causal factor was the appellant's misconception that no more action was needed on the patent application. This impression had arisen because one of the law firm's employees had mistakenly put the file to the closed cases. As a result, correspondence, including the communication under Rule 71(3) EPC and the notification that the patent application had been deemed to be withdrawn, had simply been added to the closed file, without being shown to the representative. In this case, the crucial question in examining compliance with the deadline prescribed in Rule 136(1), first sentence, EPC was whether the representative ought to have discovered the employee's mistake if he had exercised due care. In the board's view, a clerical procedure whereby official correspondence received by registered mail in relation to cases after their closure was filed away without any examination of its content and not forwarded to the client did not meet the standard required by the duty of care incumbent on a patent attorney. The board concluded that, had the representative exercised all due care, he ought to have discovered the mistake after receipt of the Rule 71(3) EPC communication at the latest. The request for re-establishment of rights had not been filed until after the deadline as calculated from that point and was therefore inadmissible.

3. Due care

In T 1289/10 the applicant sought re-establishment of his right to file an appeal. The applicant's US attorney had instructed the European representative by email to file an appeal. The email was, however, classified as a potential threat and stored in the quarantine area of the European representative's email server. It was found one day after expiry of the time limit for filing the notice of appeal.

The board held that the European representative could not establish that all due care had been exercised in handling the case. The board explained that all due care required by the circumstances (J 5/80) meant appropriate conduct by the appellant and its representatives. In this respect it had to be assessed how a competent party or representative would reasonably have acted. As a general rule, a representative acting reasonably would at least take account of known problems and apply known solutions to avoid them. The board considered that it was clearly a well-known problem that email filters do not always work reliably. More specifically it was common ground that legitimate mail from time to time was wrongly marked as a possible threat and processed accordingly. Staff in the mail department should have been instructed about the fact that an urgent email might arrive at any time and could wrongly be classified as a potential threat by the email system. The board clarified that if a European representative provided a contact email address for all kinds of mail, including mail that may require immediate action by the representative, it was essential to perform a mail check at least at the end of each business day. Given the known problem that legitimate mail from time to time was wrongly marked as a possible threat it was evident that this check must include the quarantine area of the email system. The request was rejected.

In T 1149/11 the notice of appeal was not filed in due time. The representative's assistant made a first mistake when calculating and noting the time limit for filing the notice of appeal and paying the appeal fee. The representative checked the correctness of the time limit noted in the monitoring system of the firm, noticed that it was incorrect, instructed the assistant to correct it on the same day and to report back to him once the correction was made. The assistant reported the correction of the time limit although, for some inexplicable reason, she had failed to correct it. The representative did not consider it necessary to check whether the time limit had indeed been correctly recorded.

The board held that if a representative of an applicant delegated tasks to an assistant, the representative carried the duty of care concerning the proper selection, instruction and supervision of the assistant. This responsibility lasted as long as delegation of tasks was given. The duty of care concerning supervision of the assistant required that an effective cross-check was implemented, at least in a firm where a large number of time limits have to be monitored.

Applying these principles to the case, the board considered the crucial point to be that, after identifying the first mistake, the representative did not consider it necessary to check whether the time limit had indeed been correctly recorded by the assistant, as it should have been. The representative's responsibility to supervise did not end with giving the proper instruction to correct the time limit. For a system to qualify as normally satisfactory, the corrected date must also be subjected to the same cross-check. This was particularly so in the case at issue because the nature of the time limit concerned required particular care. In fact, the time limit for filing a notice of appeal and paying the appeal fee pursuant to Article 108 EPC was absolutely critical because, if it was missed, there was no further ordinary remedy and the contested decision had legal effect (see also T 439/06, OJ EPO 2007, 491).

E. Rules relating to Fees

1. Partial refund of the examination fee - start of substantive examination

The Legal Board of Appeal ruled in J 25/10 (OJ EPO 2011, 624, see headnote) that following the withdrawal of a European patent application, a refusal by the examining division of a request for a 75% refund of the examination fee, on the basis that substantive examination has already begun (Article 11(b) RFees), must be based on facts which objectively demonstrate that this is so.

The second condition of Article 11(b) RFees, at issue here, necessitated establishing whether at the date of withdrawal of the application, substantive examination (Article 94(1) EPC) had already begun. This required a concrete act of the examining division as regards substantive examination after the request for examination had been filed. In the application in question, there was no indication in the file showing, by reference to objective criteria, that the examining division had performed such an act. As it was, the only point on which the refusal of the partial refund had been based was that the primary examiner had confirmed that he had already started substantive examination. This was no more than an unsubstantiated assertion. Whether the conditions of Article 11(b) RFees were fulfilled was a question of fact, and in the case of a refusal the examining division had to give reasons why they were not fulfilled, having established what the facts were. Simply to assert that a condition of a provision was not met, without reference to underlying facts objectively demonstrating this, would amount to an arbitrary decision which was not verifiable and would go against all legal certainty (G 3/08, OJ EPO 2011, 10). Without factual information relevant to the criteria of when substantive examination had begun, the date of this event could not be objectively determined, and here this had resulted in the determination appearing to be at the discretion of the examining division. Without such information, the appellant – but also the board – could not determine whether the decision that examination had begun was correct. The decision was therefore neither predictable nor verifiable, contrary to the principles set out in G 3/08.

In the board's view, the application of these principles was particularly important in this case, first because, since the decision which the Office, via the examining division, was required to take involved its own financial interests, it was important for public confidence in the Office that the decision-making process should be transparent, and also that such decisions should be reviewable by the boards of appeal. Second, any relevant information lay solely within the knowledge of the Office, unlike in a case in which, for example, a communication had been sent to the applicant so that there were externally verifiable facts on which a decision to refund fees could be based and reviewed. This made it important that the applicant (and the board) knew what the underlying facts were on which the decision was based. In conclusion, it could not be accepted as established in this case that substantive examination had begun when the application was withdrawn.

2. Payment of the opposition fee by debit order

In T 1265/10, although in EPO Form 2300 (notice of opposition to a European patent), Section X ("Payment of the opposition fee is made") had been crossed to indicate that a voucher for payment of fees and costs (EPO Form 1010) was enclosed, no such enclosure was found at the EPO. The opponent's representative held a deposit account with the EPO and used it regularly.

According to the board, the crossing of Section X was also a declaration of intent, namely of the intention to pay the opposition fee. A debit order had to be unambiguously recognisable and show a clear and unambiguous intention to make a particular payment (T 170/83, OJ EPO 1984, 605; T 152/82, OJ EPO 1984, 301; T 152/85, OJ EPO 1987, 191). In T 170/83 it had been stated that an authorisation to be derived from the circumstances first of all requires that the authorising person (account holder) is known and clearly identifiable, and that certain fees that are due to the EPO for a known procedure are meant to be paid by the withdrawal from such account (and not in any other way). Both the account holder and his concrete intention must therefore be beyond doubt. In addition, the circumstances must be such that the EPO can and must regard itself as authorised to effect withdrawal without further clarifications.

In T 806/99, based on almost identical facts, the board had ascertained an unequivocal intention to pay the opposition fee. The declaration effected by crossing Section X to indicate enclosure of the fee voucher satisfied at least the minimum formal requirements, and the Office knew of the existence and number of the representative's account. Equally to be considered were the circumstances in which the declaration was made and the circumstances known to the Office at the time the declaration was received: the representative's regular use of payment via the debit account; no indication of cheque enclosure; detailed opposition statement ruling out that the opposition was not seriously meant. The current board agreed that legal certainty was highly relevant when it came to the filing of an opposition. The question to be asked was: did the opponent give the Office proper authorisation to withdraw the opposition fee from his deposit account? As in T 806/99, the board recognised in the circumstances the clear intention of the opponent to settle the opposition fee by authorising its withdrawal for a specific case from an identifiable deposit account. This was sufficient for payment.

F. Law of evidence

1. Evaluation of evidence - public prior use

In T 2010/08, the board endorsed the opposition division's observation that the European Patent Office subjects claims of prior use to a very strict standard, namely the (high) standard of proof beyond reasonable doubt. It does so, in particular, because virtually all the evidence stems from the opponent's knowledge, whereas the patent proprietor can only challenge that evidence by highlighting any inconsistencies or gaps. The board found that, contrary to what the appellant/opponent had claimed, the requirement to prove prior use beyond reasonable doubt could not be circumvented by overstretching the principle of ex officio investigation and so shifting the burden of proof from the opponent to the opposition division or the board of appeal. The opposition division or the board of appeal (and, indeed, the proprietor of the patent in suit) therefore had to be provided with an indication of the facts, evidence and arguments which would enable them to establish the following without examination on their own motion:

(a) "what": an opponent asserting a prior use had to indicate what recognisable features and properties could, in its view, be objectively gathered from the alleged prior art, and, in doing so, had to list them in as abstract a form as necessary to ensure that any substantive identity of, or substantive similarity between, the used subject-matter and that of the patent in suit could be established;

(b) "when": the date on which the alleged use occurred, i.e. whether any use occurred before the filing date of the patent application (prior use);

(c) "how": all circumstances relating to the use by which the subject-matter was made available to the public (and in particular "to whom"), e.g. the place and form of use.

The board also took the view that, with regard to the complexity of prior uses, it was likewise relevant whether the opponent could have submitted evidence earlier, e.g. by offering a witness for examination, and whether it could have been expected to do so.

In the case at hand, it held that, contrary to the appellant's submission, it had not been established to the requisite level of certainty, i.e. beyond reasonable doubt, that the prior uses it had alleged had indeed occurred.

In T 1914/08, the board – like the opposition division at first instance –regarded two witnesses' testimonies as the decisive evidence proving without any gaps the alleged prior public use to the standard required in the case at hand. Each testimony, considered in isolation, gave a consistent and full picture of the process in question. Accordingly, it endorsed the opposition division's evaluation of the evidence, the standard of proof applied by it ("beyond all reasonable doubt") and the result of its analysis. It held, moreover, that the patent proprietor/appellant's request for additional evidence had to be refused. Since the opposition division had, in the course of its unfettered consideration of the evidence, concluded that the alleged prior public use had, essentially, been established by the two witnesses' testimonies and since the appellant had been unable to cast doubt on the probative value of those testimonies, there was no need for the opponent/respondent to adduce further evidence in either the opposition or the appeal proceedings (see also Chapter VII.C.1.3).

2. Burden of proof

2.1 Apportioning the burden of proof

In T 578/06, the board did not share the examining division's view that in ex parte proceedings the burden of proof is on the patent applicant even without a substantiated objection by the examining division. It is an accepted principle in proceedings before the EPO that he who raises an objection has the burden of proof for it, i.e. evidence, facts or any other sort of substantiation must be provided to support the objection. Firstly, it follows that in examination proceedings, as far as issues relating to patentability requirements are concerned, the burden of proof cannot lie initially with the applicant. Secondly, it follows that if an examining division raises an objection, it must be appropriately substantiated.

In the case at issue, the examining division had failed to provide such substantiation. Also, the passage in the EPO publication "Case Law of the Boards of Appeal of the European Patent Office", 6th edition, 2010, p. 564-565, relied on by the examining division could not not support its view that in ex parte proceedings the applicant has the burden of proof for facts in his favour, as it appeared to have been taken out of its context. In this respect, the board clarified that all the procedural situations referred to in this passage were those where, in response to a substantiated objection from the examining division, the applicant was required to support its contention.

2.2 Shifting the burden of proof

In T 1162/07, the board applied the rule that each party to opposition-appeal proceedings bears the burden of proving any facts it has alleged. Once a party has submitted conclusive proof of such alleged facts, it has complied with the requirement of the burden of proof. The evidence need not prove the facts with absolute certainty in order to be deemed conclusive; it suffices that it proves that they are highly probable. If a party has discharged its burden of proof, the counterparty seeking to refute the conclusively established facts by way of counter-arguments bears the burden of proving the alleged facts.

In the case at hand, the board had to determine which party bore the burden of proving the fact alleged by the appellant (patent proprietor) that the pigment offered for sale on the priority date of document (D3) was not the claimed melamine co-ordination compound for manufacturing LCD colour filters. To that end, the board had to establish first whether the respondent had discharged its burden of proving that the claimed subject-matter lacked novelty over document (D3). The evidence filed by the respondent could only be deemed insufficient if the fact alleged by the appellant was probable. Since the respondent had indeed discharged its burden of proof, the board concluded that the appellant bore the burden of proving its assertion. As far as apportioning the burden of proof was concerned, it was, the board held, irrelevant whether or not the appellant could access the requisite evidence more easily than the respondent and, accordingly, the appellant's argument that it had no access to additional evidence was rejected as irrelevant.

G. Representation

1. Filing of authorisations

In T 267/08 a change of representation had been notified by the new representative together with the notice of appeal. The previous representative had not contacted the EPO to indicate that his authorisation had terminated. In such cases, the procedure to be followed was governed by Rule 152 EPC in combination with the decision of the President of the European Patent Office dated 12 July 2007 on the filing of authorisations (special edition No. 3 of OJ EPO 2007, L.1). This decision stated that in cases of a change of representation, and where the EPO had not been notified of the termination of the previous representative's authorisation, "the new representative must file, together with the notification of his appointment, an individual authorisation (original and one copy) or a reference to a general authorisation already on file. If he does not, he shall be requested to do so within a period to be specified by the European Patent Office."

In the case at issue, the board invited the new representative under Rule 152(2) EPC to file an authorisation, as the board had realised that the authorisation failed to name the correct opponent. The new representative sent the authorisation by fax but failed to file the original version. Interpreting decision of the President L.1, the board concluded that where only a copy of the authorisation was filed in response to the invitation under Rule 152(2) EPC the EPO was under no legal obligation to additionally request the filing of the original.

The board stated that the filing of a valid authorisation for the opponent/appellant must, of necessity, entail the filing of the original, and a professional representative should know this. The board considered that it should be sufficient to simply request that an authorisation be filed. The acceptable form of the authorisation was derivable from decision of the President L.1. Responsibility for filing a valid authorisation could not be devolved to the board. The decision of the President of the European Patent Office dated 12 July 2007 concerning the filing of patent applications and other documents by facsimile (special edition No. 3 of OJ EPO 2007, A.3) clearly forbade the filing of authorisations by fax. Whether or not the EPO now systematically dispensed with the need to file a copy of the authorisation was immaterial, since the filing of an authorisation by fax (as performed by the new representative) was not allowable anyway. In the case at issue, it was immaterial who had signed the authorisation and in what capacity. The problem remained that no original version of the authorisation was filed. The request for correction of the authorisation under Rule 139 EPC did not change this fact, since the original version had never been never filed and it was this deficiency that had led to the current finding. The legal consequence of this was that the procedural steps taken by the new representative were deemed not to have been taken (Rule 152(6) EPC). Consequently the notice of appeal was deemed not to have been filed and an appeal did not exist. In the absence of an appeal, there was no basis for payment of the appeal fee, which was therefore reimbursed (see also Chapter VI.A.1).

2. Authorisation of an association of representatives

J 8/10 (OJ EPO 2012, ***) was about whether legal practitioners too could belong to associations of representatives under Rule 152(11) EPC (Rule 101(9) EPC 1973), with the board discussing various practical aspects and their legal consequences. The contested decision was the Legal Division's refusal to register a legal practitioner as a member of such an association.

Under the President's decision of 12 July 2007 on the filing of authorisations (special edition No. 3 of OJ EPO 2007, 128), professional representatives had to file an authorisation only in certain cases, whereas legal practitioners always had to do so. With a view to the President's regulatory discretion and to transparency for those represented, the Legal Board felt that the distinction between professional representatives and legal practitioners was appropriate, not arbitrary.

The decision on the filing of authorisations contained no provisions specific to associations of representatives. Under Rule 152(11) EPC, the authorisation of an association of representatives was deemed to be an authorisation of any representative who could provide evidence that he practised within that association. In other words, it was a legal fiction. If a legal practitioner entitled to act before the EPO under Article 134(8) EPC joined an association of representatives, that legal fiction meant he could take all steps the association was authorised to perform. As Article 2 of the decision on the filing of authorisations stood, any legal practitioner authorised to act before the EPO had to file a signed authorisation or a reference to a general authorisation already on file.

The Legal Board took the view that the possible contradiction could be resolved only by interpreting Rule 152(11) EPC as referring to an association of professional representatives. Therefore, legal practitioners were not covered by the legal fiction of Rule 152(11) EPC, and the appeal had to be dismissed.

3. Oral submissions by an accompanying person

At oral proceedings held before the opposition division on 25 February 2008, the division had refused Mr J permission to speak on behalf of the patent proprietor/appellant. The board, in T 1687/08, found that the requirements for representation by a legal practitioner were fulfilled, i.e. that the letter dated 16 January 2008 represented an authorisation which established that Mr J was entitled to represent the patent proprietor. The board stated that from the minutes of the oral proceedings and the decision under appeal it was apparent that the opposition division had not considered Mr J to be a legal practitioner under Article 134(8) EPC. Instead, it had treated him as an accompanying person, and therefore applied the requirements set out in decision G 4/95 (OJ EPO 1996, 412). In particular they had based their refusal to allow Mr J to speak on the failure of the patent proprietor to announce his intention that Mr J should be able to make oral submissions before the date set in the summons to oral proceedings pursuant to Rule 71a EPC 1973. Since the patent proprietor had requested Mr J's participation in the oral proceedings as a legal practitioner under Article 134(8) EPC, not as an accompanying person within the meaning of decision G 4/95, the division's decision not to allow him to speak had been taken under the wrong legal provision. The board concluded that such a denial by the opposition division of the right of representation had to be considered as a substantial procedural violation.

Nor was the board convinced by the respondent's arguments that the authorisation in the letter of 16 January 2008 was late-filed because Rule 71a EPC 1973 was applicable to the filing of authorisations. Rule 71a(1) EPC 1973 concerned only the filing of "written submissions" and "facts and evidence"; authorisations did not fall into either of those categories. The decision under appeal was set aside, the case remitted and the appeal fee reimbursed.

H. Decisions of EPO departments

1. Composition of the competent departments of first instance

In T 1652/08, the chairwoman of the opposition division had been replaced after the summons had been sent, but before the oral proceedings. The procedure up to the oral hearing, in particular all communications between the opposition division and the parties, had been conducted in writing. The board found that, if there was no change in the composition of the opposition division between the oral proceedings and closure of the procedure, there was no risk that the written decision would not properly reflect the views of the three members present at the oral proceedings and that a member joining after those proceedings would be unaware what had really happened then (see T 862/98 citing T 243/87).

The board observed that the new chairwoman had thus been equally able to digest and assess the facts and arguments submitted by the parties before her appointment as her predecessor had been. The oral proceedings had taken place before the newly composed opposition division and the division's composition had not changed again before closure of the procedure. The board concluded that a change in the opposition division's composition prior to the oral proceedings was not in itself a breach of the right to a fair hearing. The opposition division had at all times been properly composed and, accordingly, there had been no infringement of Article 19(2) EPC.

2. Reasons for the decision

2.1 Non-compliance with the requirements of Rule 111(2) EPC

In T 2375/10 the examining division had rejected the appellant's sole request, on the grounds that it did not involve an inventive step. The board stated that Article 56 EPC required that the assessment of inventive step be made having regard to the state of the art and that, therefore, the logical chain of reasoning of the examining division in the decision under appeal ought to have contained a proper assessment of the question of obviousness in the light of the prior art.

The board found that, in the appealed decision, the examining division had based the conclusion that the claimed subject-matter lacked inventive step merely on its finding that the technical problem as defined in the application as filed had not been solved in the entire breadth of the claims, without reformulating the problem in a less ambitious way and assessing the obviousness of the claimed solution to that reformulated problem in the light of the cited prior art. The board found that, since the requirement of inventive step under Article 56 EPC had to be assessed in the light of the prior art, the decision of the examining division to conclude that there was a lack of inventive step without referring to the prior art was insufficiently reasoned within the meaning of Rule 111(2) EPC.

In T 534/08 the board found that the opposition division's own considerations and findings had not been reflected in the decision. Accordingly, its statements could not be regarded as reasoning for the decision taken. The mere summary of a party's submission, the board held, was not per se reasoning proper to the deciding body (following T 1366/05).

It was not clear from the wording of the written decision why the opposition division had come to its conclusion, whether or not the opposition division had adopted the respondent's arguments entirely, or whether or not it had had its own objections. Moreover, the board observed that, contrary to the opposition division's statement, the arguments referred to had not been provided by the parties during the written procedure. Although the minutes indicated that the issue had been discussed, they made no reference to the arguments put forward by either party. Nor were these arguments set out anywhere in the written decision.

Due to the above deficiencies of the decision under appeal, the board considered the reasons for the revocation of the patent in suit opaque. Having been unable to establish how the department of first instance had arrived at its negative conclusion in respect of the claimed subject-matter, it held that the decision under appeal was not reasoned within the meaning of Rule 111(2) EPC.

In T 180/10 the board noted that it was evident from its analysis of the content of the examining division's substantive communications that the impugned decision fell short of revealing the reasons which had led the department of first instance to conclude lack of novelty and/or lack of inventive step or, for that matter, lack of clarity. Contrary to what was stated in the second communication ("the applicant's explanations … have been carefully considered") it was apparent that the examining division had ignored all the appellant's arguments, since this communication and, therefore, the decision were silent on them. Consequently, the impugned decision was not reasoned in that respect. It noted that it was evident that the examining division, when issuing the impugned decision, had not followed the Guidelines for Examination in the EPO, according to which the reasoning must contain, in logical sequence, those arguments which justify the order.

It concluded that the impugned decision did not meet the requirement of a "reasoned" decision under Rule 111(2) EPC (see e.g. decisions T 1309/05, T 1356/05, T 1709/06, and T 1442/09). A reasoned decision had to address the arguments of the losing party, deal sufficiently with the counter-arguments put forward and provide reasoned support for what it stated. The lack of reasoning in a decision was a substantial procedural violation since it meant that the appellant was deprived of any reasoning which it could properly address on appeal and that the board could not properly examine the reasons why the examining division had come to its conclusions.

I. Other procedural questions

1. General

In T 1535/10, the board held that responsibility for obstacles to and delays in the receipt of decisions to be notified under Rule 126(1) EPC had to be assigned according to spheres of risk. The Office was liable for both the risks arising in its own sphere and "transport risks", e.g. the risk that a letter was lost on its way to the recipient.

However, it distinguished such risks from those within the recipient's sphere of organisation and influence, e.g. the risk that employees or other authorised recipients failed to forward a letter delivered to the business address, or delayed in doing so. For a presumption that a letter had entered the recipient's sphere of organisation and influence, it sufficed that it had been delivered to his address and that he was in a position to take note of it, irrespective of whether he had actually taken (final) possession of it and noted its content.

Where the recipient did not operate his own mail office and instead made use of an external mail office, he had to accept that the external office would be treated as if it were his own in matters relating to the delivery of communications subject to deadlines. Any delay in forwarding such communications on the part of the external office would thus be attributable to the recipient's sphere.

2. Exclusion from file inspection under Rule 144 EPC

In J 23/10, the appellant had, during appeal proceedings, submitted a spreadsheet generated monthly by its monitoring system and listing applications for which renewal fees were soon to be payable. It had done so to prove that its monitoring system was adequate in connection with a request for re-establishment of rights. It requested that the document be excluded from file inspection under Rule 144 EPC because it mentioned a large number of applications filed worldwide. It contended that, although all the applications shown on the spreadsheet had been published, the list nevertheless provided its competitors with a large amount of information. The document also showed that it paid renewal fees for applications for which it was not the registered applicant, but which had been transferred to it internally, without the transfers having been made public.

The board decided that publication of the document in question could be prejudicial to the appellant's interests, because it concerned information about internal transfers and in particular showed that the appellant paid the renewal fees for certain applications for which it was not the registered applicant. Moreover, the content of the document had been deemed irrelevant for the assessment of the case as such and had thus played no role in the board's decision. Therefore, the board decided that the document in question would be excluded from file inspection.

VII. PROCEEDINGS BEFORE THE EPO

A. Preliminary and formalities examination

1. Subsequent filing of missing parts of the description or missing drawings

In T 2166/10, the patent proprietor filed an appeal against the decision of the opposition division revoking its patent, which had been granted on the basis of a Euro-PCT application. Some of the pages of the description had been missing from the original application and the opposition division held that only the originally filed pages were entitled to the international filing date. The subject-matter as granted consequently extended beyond the content of the application as filed.

The board took note that the International Bureau had held that the description as originally filed had not included the missing pages and that, in accordance with a conditional request by the proprietor, the IPEA had taken into account the amendments submitted with a Demand under Article 31 PCT, which resulted in the addition of new paragraphs to the description as filed.

In the board's judgment, there was no doubt that the preliminary examination and the patent in suit were partly based on new description pages which had been submitted in the course of the international preliminary examination procedure by way of amendment and which were missing from the application as originally filed. The applicant had never raised the issue of the missing pages or requested a correction of the filing date (cf. J 3/00). Nor subsequently did the applicant file a request for correction of an error in the decision to grant.

The board therefore concluded that the opposition division was correct when it held that the application as filed did not include the missing pages of the description. The appeal was dismissed.

B. Examination procedure

1. Admissibility of further amendments

1.1 Amendments relating to unsearched subject-matter

Article 92 EPC stipulates that a European search report must be drawn up on the basis of the claims, with due regard to the description and any drawings.

In T 789/07 the board held that in order to search a claimed feature completely – as required by Article 92 EPC and in line with the Guidelines – the search division must as a rule ascertain how the feature is to be interpreted in the light of the description and drawings. Only then can it arrive at a reasoned assessment about the amendments likely to be made to the claims during examination proceedings and within the framework of the original disclosure. This interpretation also forms the basis for comparison, with a view to Rule 86(4) EPC 1973, with the originally claimed invention or group of inventions. The board also took the view that a claimed feature falling within the scope of the search must be regarded for Rule 86(4) EPC 1973 purposes as searched, even if it was not in fact searched in a specific case.

2. Substantive examination without an additional search

In T 1411/08 the board stated that where a search division has decided that no search is to be performed, it is not always necessary for the examining division to carry out an "additional search" before raising an inventive-step objection. T 1242/04 (OJ EPO 2007, 421) had explained it in this way: "According to the established case law of the boards of appeal it is possible to raise an objection of lack of inventive step without documented prior art ... That should be allowable where the objection is based on 'notorious knowledge' or indisputably forms part of the common general knowledge. Such cases, however, are exceptional, and a search is otherwise essential."

In the case at issue, the board stated that "notorious" knowledge, for which no search needed to be performed before an objection of lack of inventive step was raised, was understood, firstly, as being so well known that its existence at the date of priority could not be reasonably disputed. This was to be distinguished from the skilled person's common general knowledge, which was something that generally could reasonably be questioned. Secondly, it was understood as relating to generic features, that is, to features which were defined in such a way that technical details were not significant. The board noted that the examination of a combination of features in relation to inventive step normally involved questions such as what advantages and disadvantages the combination was said to have, and in what technical areas it was used. This was the sort of information a search should uncover. On the other hand, a claim might be so drafted that such questions did not arise. It was prior art reflecting such generic features that the board understood as "notorious". The board held that the examining division could and should have ensured that a search was performed before refusing the application for lack of inventive step. The consequence of the lack of search was that the decision was founded on prior art which could not reasonably be assessed. The board considered that the failure to carry out an "additional search" constituted a substantial procedural violation and reimbursement of the appeal fee was ordered.

2.1 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 1388/10 the appellant argued that the refusal of its application had been flawed because refusal directly after a first examining communication was allowed only if the applicant failed to make a "bona fide" response to that communication, whereas in the present case it had indeed made a "bona fide" attempt to overcome the examining division's objections. Its application should therefore not have been refused without a further "warning".

The board noted that examining divisions have discretion over how often to invite an applicant to comment (see Guidelines, April 2010 edition, C-VI, 4.3, last paragraph). It also had to be borne in mind that the Guidelines merely offered general guidance covering normal occurrences. Their application in specific individual cases was the responsibility of the examining division, which could depart from them in exceptional cases. Also, the Guidelines were not the law – unlike the EPC and its Implementing Regulations (see Guidelines, April 2010 edition, General Part, point 3.2).

The board commented that when reviewing examining divisions' decisions it did not assess whether the division had complied with the Guidelines. Rather, it considered whether the division had exercised its discretion within the limits set by the EPC and its Implementing Regulations. In the present case, the board held that the examining division's decision not to issue a second communication under Article 94(3) EPC fell within the discretion available to it, and its exercise of that discretion had not been flawed (see also under Chapter II.B.2).

3. Consideration of Article 84 EPC in the case of multiple requests

In its catchword for T 75/09 the board stated that where - as in the case before it - there are multiple requests and a feature common to all requests is held not to meet the requirements of Article 84 EPC, as a consequence of which higher-ranking requests are refused, all lower-ranking requests retaining this feature have to be refused for the same reason.

The fact that in a lower-ranking request the offending feature no longer has to be relied upon to establish a distinction over the prior art does not overcome the defect pursuant to Article 84 EPC. Nor does it give the deciding body the discretion to disregard the deficiency.

In particular it has to be borne in mind that the significance of a feature may become apparent only at a later stage in the life of a patent, e.g. in opposition or revocation proceedings.

4. Legal basis for refusing an application if no text submitted or agreed

Article 113(2) EPC states that the EPO must examine, and decide upon, the European patent application or the European patent only in the text submitted to it, or agreed, by the applicant or the proprietor of the patent.

In T 888/07 the board held that, if the examining division refused to consent to the latest submitted set of amended claims, put forward to substitute for the claims previously on file under Rule 86(3) EPC 1973, the previous set of claims that the examining division had consented to consider but which the applicant had not maintained as an auxiliary request was not automatically revived. It noted that in accordance with Article 113(2) EPC and established case law (see e.g. T 237/96) a decision could not be based on the previous set of claims. Article 113(2) EPC 1973 stated that the European Patent Office had to consider and decide upon the European application or patent only in the text submitted to it, or agreed to, by the applicant or proprietor. Deciding to refuse an application on the grounds that the claims previously on file were not allowable would have contravened Article 113(2) EPC 1973, since these claims were no longer pending.

5. Withdrawal of the patent application - presumption of an official publication

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 1/11 it was not disputed by the appellant that retraction of the withdrawal was no longer possible once the withdrawal had been published in the European Patent Bulletin. The question at issue was whether a publication of the withdrawal in the European Patent Register should have the same legal consequences. The appellant argued that, despite the technical and functional approximation of Register and Bulletin, only the latter carried the presumption of an official publication. The board noted that both the European Patent Register according to Article 127 EPC and the European Patent Bulletin according to Article 129(a) EPC were official sources of information to the public. There was nothing that would allow a distinction as to which of the two was more official, reliable or decisive. This was not to say that the Bulletin had no functions other than those of information. Contrary to what the appellant alleged, entries into the Bulletin were no more "cast in stone" than those of the Register, and could be corrected either under Rule 140 EPC, or by way of a decision. As far as the function of providing information to the public was concerned, the board was unable to deduce a fundamental difference between the Register and the Bulletin.

In conclusion, the board decided that the appellant's requests for retraction of the withdrawal of its application as a correction of an error under Rule 139 EPC had to be refused.

C. Special features of opposition and appeal proceedings

1. Late submission

1.1 New arguments in appeal proceedings

In T 1621/09 the board considered whether the new submission or argument of the appellant/opponent should be taken into consideration. In the grounds of appeal the appellant contested novelty and inventive step on one slide of a presentation. At the oral proceedings the appellant referred for the first time to other slides of the same presentation. The board stated that during oral proceedings the appellant sought to advance a different or alternative case which, although based on facts and evidence already in the proceedings, was contrary to the appellant's previous case.

A new argument brought forward in appeal proceedings by a party which would have the effect of amending its case, even if the argument is based on evidence and facts already in the proceedings, can only be introduced into the proceedings at the discretion of the board of appeal by way of an amendment under Article 13 RPBA. To the extent that the decision of the Enlarged Board of Appeal in G 4/92 (OJ EPO 1994, 149) deals with the general admissibility of new arguments in appeal proceedings, it must be taken to have been modified by the amendments to the RPBA introduced with effect from 1 May 2003.

In the case at issue, the respondent/patent proprietor was not present at the oral proceedings when the question of the amendment arose. The board dealt with the following question: where a new argument which constitutes an amendment to a party's case is put forward for the first time at oral proceedings, how is the exercise of the board's discretion to admit the amendment affected if the party prejudiced is not present at the oral proceedings, even though duly summoned? The board considered the relationship between Article 15(3) and Articles 13(2) and 13(3) RPBA and stated that Article 13(2) RPBA must be read subject to Article 15(3) RPBA, with the result that the absence of a duly summoned party does not prevent a board from allowing an amendment to another party's case and reaching a decision on the basis of the amended case. The absence of the party is nevertheless a factor to be taken into account in the exercise of the discretion. In the case at issue the board decided however not to allow the appellant to amend its case, because inter alia the new argument amounted to a new way of putting the appellant's case on novelty and also impacted on the inventive step attack. It was raised at the last stage of the appeal, namely during oral proceedings, in the absence of the respondent, and there was no reason why the new argument could not have been raised earlier.

In T 1069/08 the findings of the examining division regarding the non-obviousness of the claimed subject-matter were not contested in the opponent's notice of opposition, nor did the opposition division consider that there was any reason to examine them of its own motion. This issue was also not raised in the appellant's grounds of appeal. It was only at the oral proceedings that the appellant/opponent asked the board for an opportunity to present its arguments on the lack of obviousness of the claimed subject-matter. This request was refused by the board for the following reasons:

The appellant's statement of grounds of appeal did not include any argument regarding the obviousness of the claimed subject-matter. Hence, the introduction of this new argument at oral proceedings represented an amendment to the appellant's case (Article 13(1) RPBA). It was thus at the board's discretion to admit and consider it. Even after the board's communication in which reference was made to the examination proceedings and to the relationship between sufficiency of disclosure and inventive step, the appellant did not consider it necessary to introduce the new argument into the appeal proceedings. The appellant's failure to submit the new argument in reply to the board's communication deprived the respondents of the opportunity to present their comments thereon and/or of the opportunity to reconsider their intention not to attend the oral proceedings.

1.2 Procedural economy

In T 1488/08 the board referred to the established case law that a statement of grounds which merely generally refers to previous first-instance submissions cannot replace an explicit account of the legal and factual reasons. The board stated that, on the sole basis of the statement of grounds of appeal, it had no reason to examine the grounds of inadmissible extension of subject-matter and lack of novelty without making investigations of its own. These new objections were only raised after the reply of the respondents and therefore were late-filed. Their admissibility was a matter for the board's discretion pursuant to Article 13(1) RPBA.

The board stated that the appellants had not submitted any objective reasons justifying the filing of the grounds of added subject-matter and lack of novelty at a later stage than with the appeal. The attempt of the appellants to re-introduce these grounds thus might only be regarded as a change of position determined by procedural tactics (so-called "salami" tactics). On this basis alone, the board considered, in view of procedural economy, that it should exercise its discretion not to admit the later-filed grounds of added subject-matter and lack of novelty. For the sake of completeness, the board also considered whether these late-filed grounds would constitute, on a prima facie basis, a valid challenge to the patentability of the claimed subject-matter, and came to the conclusion that this was not the case. The board therefore exercised its discretion not to admit the late-filed grounds of added subject-matter and lack of novelty for reasons of procedural economy.

1.3 Late filing of documents concerning public prior use

In T 1914/08 the respondent had announced at an early stage its intention to file, in response to objections raised by the appellant in its statement of grounds of appeal, further documents substantiating alleged public prior use. Justifying why these documents had not been submitted until more than two years later and only shortly before the date set for oral proceedings, the respondent stated that it had been experiencing financial difficulties in the interim period.

The board exercised its discretion in this regard and considered that, given the documents had been referred to and therefore available to the respondent from early on, their late filing without a justification which was causally linked to the proceedings was not in keeping with a proper conduct of the procedure. The late-filed documents were thus not admitted into the proceedings (see also Chapter VI.F.1).

2. Intervention

Article 105(1)(a) and Rule 89 EPC allow third parties to intervene in opposition proceedings after the opposition period has expired, if they can show that proceedings for infringing the patent in question have been instituted against them. In T 1196/08, the infringement litigation was being heard by a Romanian court and concerned a Romanian patent obtained under the extension system for European patents.

For intervention to be admissible, the infringement litigation must concern the European patent which is the subject of the proceedings in which the assumed infringer has asked to intervene (T 338/89 and T 446/95). The board held that "the same patent" under Article 105(1)(a) EPC means a European patent within the meaning of Article 2(1) EPC 1973, i.e. a patent granted for one or more contracting states under the Convention, which under Article 1 EPC 1973 is a system of law, common to the contracting states, for the grant of patents for invention. Therefore, to meet the conditions of Article 105(1)(a) EPC, the national infringement proceedings must relate to a European patent granted under the Convention for at least one contracting state.

The board held that a patent obtained under the extension system is not a European patent within the meaning of Article 2(1) EPC 1973, because extension and the ensuing legal consequences are based solely on the national law of the extension state concerned. Consequently, intervention based on infringement proceedings relating to such a patent does not fulfil one of the conditions of Article 105(1)(a) EPC, and is therefore inadmissible.

In T 7/07 the board held that the patent in suit was not granted for Lithuania under the EPC, as Lithuania was an extension state and therefore could not be designated for a European patent. The national law of the extension state governs the extension proceedings and the legal effects of the extension. The infringement proceedings were based on a patent which had been granted for a number of EPC contracting states and which, under Lithuanian law, also took effect in Lithuania, but exclusively on the basis of Lithuanian national law, which conferred the same effect on this patent as on a national patent. As a result, the infringement proceedings were not based on the European patent in suit in the opposition proceedings. The board agreed with the findings in T 1196/08 that an intervention based on proceedings for infringement of a patent that has effect in a particular state solely on the basis of national law is inadmissible. The submissions made by the intervener were consequently regarded as third-party observations under Article 115 EPC (see also Chapter I.B.1.3 and VIII.2.1).

3. Article 115 EPC - observations by third parties

In T 146/07 the opponent was the sole appellant against the interlocutory decision of the opposition division. Anonymous third-party observations were received by the board at a very late stage. According to Rule 114(1) EPC, any observations by a third party must be filed in writing.

The board stated that this requirement implied that the observations have to be signed (see Rules 50(3) and 86 EPC) in order to allow an identification of the third party. Identification is particularly important in the context of opposition proceedings in order to allow the competent organ of the EPO to verify whether the observations have indeed been filed by a third-party rather than by a party to the proceedings. Otherwise, a party might be tempted to submit late observations and/or documents by means of anonymous third party observations in order to avoid negative procedural consequences such as apportionment of costs.

When a party to the proceedings submits an unsigned document, the document is deemed not to have been filed if, after a corresponding invitation has been sent out by the EPO, it is not signed in due time (see Rule 50(3) EPC). Since unsigned anonymous third-party observations do not allow the EPO to send out such an invitation at all, they necessarily remain unsigned. This has the consequence that they are deemed not to have been filed.

The board was aware that anonymously filed third-party observations might nevertheless be adopted by a party to the proceedings as its own or may even trigger objections by the competent organ of the EPO of its own motion (T 735/04, dealing with the exceptional situation that a highly relevant patent application of one of the patent proprietors had been submitted by an anonymous third party). However, in the absence of such a further procedural act, anonymous third-party observations are to be disregarded altogether. This view is in line with the decisions G 1/03 and G 2/03 (OJ EPO 2004, 413 and 448) in which the Enlarged Board of Appeal refused to take into account an anonymously filed third-party statement. Thus, the anonymous observations under Article 115 EPC were deemed not to have been filed and were disregarded by the board.

In T 1336/09, however, the board came to the conclusion that in this ex parte case the anonymous character of the third-party observations did not bar them from being admitted into the procedure. The third-party observations were filed only four working days before the scheduled oral proceedings, citing two new documents which were obviously highly relevant against several of the requests then on file. The appellant, though informed of the filing of the observations in advance of the oral proceedings, neither requested that these be excluded from the procedure, nor that the oral proceedings be postponed. At the start of the oral proceedings, it filed an amended request in which due account had been taken of the new citations.

In respect of the anonymous character of the observations under Article 115 EPC, the board noted that the Decision of the President of the EPO and a Notice from the EPO concerning the filing of third-party observations under Article 115 EPC (OJ EPO 2011, 418 and 420) allowed third-party observations to be filed without signature and anonymously. The board stated that the above dispositions were in line with earlier decisions of the boards, which did admit such observations both in ex parte and in inter partes appeal proceedings, without apparent misgivings in relation to their anonymous character (T 258/05, T 735/04).

The only requirements imposed on third-party observations by Rule 114(1) EPC were that they be filed in writing in an official language of the EPO and stated the grounds on which they were based. Rule 50(3) EPC and by analogy Rule 86 EPC, which established the requirement that documents filed in the examining or opposition procedure be signed, did not in the board's opinion directly apply to third-party observations. As a matter of fact, the reference in Rule 50(3) EPC, in relation to the case of a missing signature, to "the party concerned" indicated that the rule addressed the filing of documents by parties to the procedure, which a person who filed third-party observations clearly was not, as was expressly stated in Article 115 EPC.

The board was aware of decision T 146/07, in which the deciding board disregarded third-party observations because of their anonymous character, on the basis inter alia of a different evaluation of the relevance to this issue of Rule 50(3) EPC and of decisions G 1/03 and G 2/03 (OJ EPO 2004, 413 and 420, in which the Enlarged Board of Appeal did not take into account an anonymously filed statement in relation to the allowability of disclaimers). Contrary to the case at issue, T 146/07 concerned an inter partes appeal, and it emphasised that "Identification is particularly important in the context of opposition proceedings in order to allow the competent organ of the EPO to verify whether the observations are indeed filed by a third party rather than by a party to the proceedings".

In T 1336/09 the board stated that in ex parte proceedings, however, the appellant is the sole party and it can at any time raise new issues or submit new prior art - and so can the board of its own motion by virtue of Article 114(1) EPC. Accordingly the risk of anonymous third-party observations providing a cover for procedural abuse could largely be excluded.

4. Transfer of party status

4.1 Transfer of opposition status to universal successor

One of the questions that the board in T 1421/05 had to decide was, if an opponent transfers the business assets in the interests of which the opposition was filed to another company and then ceases to exist, is a later appeal filed in the name of the non-existent company admissible? The board answered the question in the affirmative.

An opposition 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. Where the business assets in relation to which an opposition was filed have been transferred and at the same time the transferor has contractually agreed to transfer the opposition to the transferee, the status of opponent remains with the transferor in the absence of there being filed with the Office (a) evidence sufficiently evidencing the transfer and (b) a request to recognise the transfer of opponent status. Where in such a case the transferor subsequently ceases to exist but has a universal successor, the status of opponent is capable of passing to that successor. The mere possibility of abuse (in the sense of G 3/97, OJ EPO 1999, 245) arising out of such events does not prevent opponent status passing in this way; it is for the proprietor to prove relevant acts of abuse, see also under VII.E.2.1 and VII.E.4.3.1.

4.2 Party status as proprietor

In T 128/10 the patent was granted to X. An opposition was filed against it and the patent revoked. An appeal was filed in the name of G and at the same time an assignment document between X as assignee and G as transferee was produced. However, the administrative fee for the request of transfer pursuant to Rule 22(2) EPC was only paid after expiry of the appeal period.

The board held that according to Rule 22 EPC in conjunction with Rule 85 EPC, the procedural requirements to be fulfilled for recording the transfer of a European patent in the European Patent Register consist in the filing of a request of the interested party, the production of documents providing evidence of the transfer, and the payment of an administrative fee. These requirements do not need to be fulfilled at the same time. If they are met on different dates, the transfer only has effect vis-à-vis the EPO from the date on which all the requirements mentioned above are fulfilled.

The board was of the view that the effective date of transfer of the patent to G was the date of payment of the administrative fee, which fell outside the period for filing a notice of appeal. The appeal was rejected as inadmissible (see also Chapter VII.E.4.3.1).

5. Surrender or lapse of the patent

5.1 Requests for revocation of the patent

In T 1610/07 the respondent/patent proprietor requested the withdrawal of the patent. The board stated that "withdrawal" of a patent at the request of the patent proprietor was not as such foreseen in the procedure according to the EPC.

The boards have followed two different ways of dealing with requests by patent proprietors for withdrawal of their patent. Either such a request was interpreted as expressing disagreement with the text of the patent (see Case Law of the Boards of Appeal of the EPO, 6th edition 2010, VII. C.6.1.2, second paragraph, and also decisions T 904/05, T 535/00, T 348/00). Or such a request was interpreted as the patent proprietor's agreement with the opponent's request for revocation of the patent (see Case Law of the Boards of Appeal of the EPO, 6th edition 2010, VII. C.6.1.2, fourth paragraph and also T 820/94).

The respondent explained that it agreed with the text in which the patent was granted, but that it was no longer interested in the maintenance of the patent and therefore would refrain from taking further action to maintain the patent.

Given that these statements were in reaction to the board's communication, the board interpreted the respondent's request for withdrawal of the patent therefore as a request for revocation of the patent. Hence, both the appellant and the respondent requested that the decision of the opposition division be set aside and that the patent be revoked. The board followed these requests and revoked the patent. It did so without substantive examination as to patentability and thus also without detailed reasons in accordance with the case law (for example the decisions cited in the Case Law of the Boards of Appeal of the EPO, 6th edition 2010, VII. C. 6.1.2, third paragraph).

In T 1244/08, the appellant (patent proprietor) had informed the Office that having decided to abandon the patent in question it did not agree with the text of the patent as granted and was not proposing an amended one. Then however it had sent in a second letter asking to retract that statement. The board held that the first letter had been tantamount to withdrawing the appeal; it had thus immediately terminated the appeal proceedings, and the opposition division's revocation decision had become final. Therefore, any later request to retract it and continue the appeal proceedings was inadmissible. According to established board of appeal case law (T 18/92, T 481/96, T 1003/01, T 53/03), if an appellant holding a patent revoked by an opposition division states clearly and unambiguously that it is no longer interested in pursuing the appeal proceedings, that is tantamount to a statement withdrawing the appeal.

5.2 Lapse of the patent before opposition proceedings

In T 606/10 the opposed patent had already lapsed before the opposition against it was filed. The opposition division had maintained the patent in amended form. An appeal was lodged by the opponent/appellant with the request that the decision under appeal be set aside and the patent revoked in its entirety. The patentee/respondent requested that the appeal proceedings be terminated and, as an auxiliary request, that the patent be revoked.

The respondent/patentee based its main request, that the appeal proceedings should be terminated, on Rule 84(1) EPC. According to this provision, if the European patent has been surrendered in all the designated Contracting States or has lapsed in all those States, the opposition proceedings may be continued at the request of the opponent filed within a specified time limit.

The board stated that in the case before it the patent had already lapsed prior to the filing of the opposition. Rule 75 EPC explicitly states that an opposition may be filed even if the opposed patent has been surrendered or has lapsed in all the designated Contracting States. With respect to appeals in opposition proceedings, a similar provision is contained in Rule 98 EPC.

It was the board's understanding of this legislative framework that Rule 84(1) EPC did not apply to the situations falling under the separate legal provisions of Rules 75 and 98 EPC. In those situations, the opponent when filing the opposition or the appeal would normally be very well aware that the patent had already lapsed so that the notice of opposition or appeal clearly would show his interest in the revocation of the patent with retroactive effect (see Article 68 EPC). Thus, it was difficult to see any need for the mechanism provided in Rule 84(1) EPC, according to which the EPO had to inform the opponent of the lapse of the patent and the proceedings could be continued only after the filing of a corresponding request by the opponent.

6. Apportionment of costs

In T 1282/08 a new document was submitted only in the appeal proceedings. The delay was not justified. However, because the document was relevant the board admitted it and remitted the case to the department of first instance. Regarding the costs of the subsequent first-instance proceedings, the board noted that in some cases some boards of appeal ordered the apportionment of future costs (see T 847/93, T 715/95). The apportionment of costs was always at the discretion of the board, and the scenarios facing the other boards might have been different in the above-cited cases. Nevertheless, the board had difficulty seeing how it could make a decision, at the remittal stage, on the apportionment of costs yet to be incurred in subsequent proceedings, the course and outcome of which were still open to speculation. The various uncertainties that would always prevail in this type of case meant it would be better to wait for the outcome of the subsequent proceedings before deciding on the apportionment of costs. Thus, in the present case, if document D34 proved decisive for the outcome of the opposition, it would be more equitable to apportion the costs incurred in the previous proceedings, rather than those incurred subsequently. The board therefore found that in the present case the possible apportionment of opposition costs had to be decided by the opposition division at the end of the opposition proceedings on the basis of the then situation and any requests it received. Decisions T 758/99, T 890/00 and T 1182/01, as examples from the case law, document other situations where the boards left it to the opposition division to decide on the apportionment of costs incurred in subsequent first-instance proceedings.

In T 854/09 the opposition division decided to apportion 50% of the opponent's costs to the proprietor under Article 104(1) EPC. The opposition division held that this was justified as the proprietor had filed a new request based on material from the description towards the end of oral proceedings, and this necessitated adjournment to allow the opponents to react and also to deal with the remaining requests. The board found it equitable to apportion part of the ensuing costs to the proprietor as the adjournment was primarily the result of the late filing of the new first auxiliary request, though it need not have been admitted by the opposition division (Rule 116 EPC). The costs concerned are those reasonably incurred by either opponent in connection with the second oral proceedings, that is the expenses of a single representative for each opponent preparing for and attending the second proceedings, including travel and accommodation.

In T 1771/08 the appellant/opponent's representative made an auxiliary request, in case the appeal was dismissed, that the appellant be awarded the cost of an additional day's preparation (eight hours of work) because, owing to the postponement of the oral proceedings before the board of appeal, he had had to prepare for them twice. In response to the chairman's observation that the representative had agreed to the postponement in a telephone conversation with the registry and at the same time had indicated that he expected to receive a summons soon with the new date, he confirmed that he had said he "would" agree to a postponement. In doing so, however, he had not waived his right to reimbursement of the resulting costs. The board concluded that an apportionment of costs under Article 104(1) EPC could be ruled out from the outset for lack of equity if the appellant's representative had agreed to the proceedings' postponement unreservedly. In the board's view, the agreement had been unconditional in this case. In the absence of any suitable evidence, the remark by the appellant's representative that he "would" agree to a postponement did not imply a tacit reservation that his approval was contingent upon the existence of a claim for the apportionment of costs in favour of the appellant.

D. Opposition procedure

1. Admissibility of the opposition

1.1 Legal basis for the opposition

In T 600/08 the applicant named in the divisional application at the time of filing was not identical to the applicant which had filed the parent application. The latter had thus submitted a request under Rule 88 EPC 1973 for the name of the applicant to be corrected - which was granted by the receiving section. The appellant/opponent argued in the opposition proceedings that the receiving section had been wrong to grant this request for correction. The respondent/patent proprietor had countered that it was not admissible to raise an objection of this nature in opposition proceedings.

The board noted that reviewing, as part of opposition proceedings, the legality of a decision by the receiving section to correct an applicant's name in a divisional application was not provided for in the EPC. The only permissible grounds for opposition were set out exhaustively in Article 100 EPC, such that objections to the text of a patent as granted could not be raised on other grounds. As a rule, the grant of a patent remedied any formal errors or deficiencies arising during the grant procedure, including any unlawful grant by the receiving section of a request for correction under Rule 88 EPC 1973. Thus, in the absence of valid grounds for opposition under the EPC, the patent granted could not be revoked on such a basis in opposition proceedings. Moreover, the fact that the text of the contested patent had been changed was of no consequence; the "cut-off" effects associated with the patent grant applied to any formal errors or deficiencies which had arisen during the grant procedure in this respect too.

In the parallel cases T 1553/06 and T 2/09 involving the same parties but different patents, the same board dealt with the admissibility of the respective oppositions filed within the framework of a test case. In particular, the board examined whether the parties and their representatives had worked together on a test case in order to obtain answers from the EPO to specific legal questions regarding prior art (see also under I.B.1.3).

To establish the admissibility of its oppositions, the opponent (appellant) relied basically on the argument that the contentious character of the opposition proceedings was not a general principle and, even if so, the parties in the case at issue satisfied the criteria for "contentious proceedings". The existing co-operation between the parties' representatives on the test case that arose out of a discussion in a study committee did not render the proceedings non-contentious.

Following the principles set out in G 9/93 and G 3/97, the board emphasised the contentious nature of opposition proceedings as a necessary condition for the admissibility of the opposition and examined whether an abuse of procedure, i.e., because the opponent acted on behalf of the patent proprietor ("straw man"), rendered the opposition inadmissible in the case before it. The board could not find a circumvention of the law by abuse of process as it saw no reason to cast doubt on the parties' submissions that the opponent was not bound by any instructions from the patentee or the study committee.

As to the further question whether the opposition proceedings were deprived of their contentious character due to the very fact that the parties defended their positions within the framework of a test case, the board did not see any reason to question that the proceedings were contentious in nature. An opposition filed within the framework of a test case is not inadmissible for that sole reason, provided that the prosecution of the proceedings thereby instituted is contentious because the parties defend mainly opposing positions (see point 1.3 of the reasons in both cases). The respective oppositions were therefore deemed admissible.

1.2 Opposition period

In T 1644/10, the board looked at both determination of and failure to meet the deadline for filing notice of opposition.

According to Article 99(1) EPC 1973, the opposition period is triggered solely by the grant of a European patent and publication of the mention of its grant in the European Patent Bulletin, and not by publication of the patent specification or, for that matter, by publication of any subsequent correction of that specification. It also follows from the systematic relationship between Articles 98 and 99 EPC 1973 that the wording of the published specification has no legal effect whatsoever, even where it differs in substance from the grant decision. In particular, a mention published in the European Patent Bulletin that a correction of the patent specification has been issued does not trigger either a first or any "further" opposition period, even if the corrected specification confers a broader scope of protection than that conferred by the one originally published.

Since, accordingly, the opposition period had begun only on publication of the mention of grant and not on publication of the patent specification, the board concluded that the appellant had not filed its notice of opposition within the prescribed period. Since the legislation did not provide for re-establishing an opponent's rights with respect to the deadline for opposition, it had to examined whether the failure to observe the time limit could be legally "cured" on the basis of the principle of legitimate expectations. The board found that it could not, even if the appellant had refrained from filing a notice of opposition because it had relied on the accuracy of the specification published by the EPO (see also Chapter VI.A.2.).

1.3 Admissibility of documents filed and referred to in a notice of opposition

In T 1022/09 the respondent raised doubts about the admissibility of a number of documents into the opposition proceedings. In particular, each of these documents was filed with a corresponding notice of opposition of one of the ten opponents and in each case the filing of the document was substantiated by the document being discussed in detail with respect to at least one ground of opposition. The opposition division had considered that these documents were not part of the opposition proceedings for one or more of the following reasons: it was not proven that they were publicly available; their publication was not proven; their dates of publication were not proven to have been before the date of priority; or they were filed by the opponent whose opposition the opposition division retrospectively considered to have been inadmissible after the professional representative withdrew its representation.

In the board's view, the question of whether the publication date or content of the respective document made it relevant to the discussion of the grounds of opposition was a consideration separate from that of admissibility when the document was filed with an admissible notice of opposition and its alleged significance was discussed in that notice. In this respect, the opposition division had confused the criteria for admissibility of late-filed documents with those for documents filed with and referred to in an admissible notice of opposition. In the latter case the content and publication date did not come into play for the question of admissibility. With regard to the documents filed by the opponent along with its notice of opposition, the board considered that since their filing was substantiated, they were automatically in the opposition proceedings. This fact could not be changed retrospectively by the subsequent withdrawal of representation by the professional representative.

1.4 Due substantiation of the grounds for opposition

The board in T 1014/09 had to establish whether the supporting facts, evidence and arguments had been duly indicated in the notice of opposition. As a fact to be considered in examining the admissibility of the opposition based on the ground under Article 100(c) EPC, the opponent had cited, in its notice of opposition, an amendment which it considered inadmissible and which had resulted from the replacement, during the grant procedure, of the term "Trägergehäuse" (support housing) by "Zwischengehäuse" (intermediate housing) throughout the description and claims in the application as filed. It had, the board found, thus indicated a fact within the meaning of Rule 55(c) EPC 1973 in support of the Article 100(c) EPC ground for opposition. As far as this amendment to the claim as compared with the disclosure in the application as filed was concerned, it had argued that it was inadmissible "because it was not covered by the original disclosure".

In deciding on the admissibility of the opposition, the board had to establish to what extent this general reference to the original disclosure could be regarded as a due indication of the facts, evidence and arguments presented in support of the grounds for opposition within the meaning of Rule 55(c) EPC 1973, and to what extent the assessment of the term "intermediate housing" as "misleading" could be construed as an indication that the amendment to the claim had unlawfully changed or extended the technical information. In answering these questions, it had to take into account that there was no term corresponding to "intermediate housing" in the application as filed, that the meaning of this term clearly differed fundamentally from that of the term "support housing" used in the original application documents and that the amended term in the combination of features in claim 1 appeared to be significant for the definition of the invention. It concluded that the facts and the accompanying legal analysis set out in the notice of opposition had to be regarded as duly substantiating the ground for opposition under Article 100(c) EPC.

2. Substantive examination of the opposition - new grounds for opposition

In T 1549/07, the ground for opposition under Article 100(b) EPC had not been raised until after expiry of the opposition period and therefore had to be considered late filed. The opposition division had admitted the new ground to the proceedings without stating its reasons for doing so. It had then rejected the opposition and maintained the patent as granted. The patent proprietor/respondent requested that the board refrain from examining the ground under Article 100(b) EPC in the appeal proceedings.

The board found that, while the opposition division's inadequately reasoned decision constituted a procedural error, the patent proprietor had not objected to it at any time during the oral proceedings. Nor had it led in the course of the opposition proceedings to any final decision adversely affecting the patent proprietor. The board thus deemed the patent proprietor's request that the board refrain from examining the ground for opposition under Article 100(b) EPC on appeal inadmissible and refused it. There were no EPC provisions under which a ground for opposition admitted to and examined during the proceedings could be eliminated at the appeal stage. Since, in the case at issue, the opposition division had decided to admit the ground for opposition under Article 100(b) EPC, it had become part of the contested decision and, as a result, was not "a fresh ground for opposition" introduced on appeal within the meaning of the opinion in G 10/91. The board therefore had no need to obtain the patent proprietor's consent to the introduction of the ground for opposition under Article 100(b) EPC and was entitled to consider that ground further.

3. Amendments in opposition proceedings

3.1 Admissibility

The opposition division's decision to admit into the proceedings an auxiliary request (main request in the appeal proceedings) filed during the oral proceedings was challenged before the board in T 491/09. In its decision the board concluded that the opposition division had exercised its discretion according to Rule 116(1) and (2) EPC by taking into account the following criteria:

a) prima facie allowability: contrary to the opponent's/appellant's argument that the opposition division should have examined the prima facie clarity of the claims, it was evident from the minutes of the oral proceedings that no such objections had been raised. Also, the board could not share the appellant's view that the opposition division should ex officio have examined the entire claim for clarity, following the principles of T 1459/05 and T 656/07. Apart from the fact that T 656/07 was issued after the oral proceedings at the opposition stage and that, in general, the opposition division could hardly be expected to receive knowledge of any single decision immediately after its deliverance, the board could not find any fault with the opposition division not following a decision which expressly stated that it concerned a very particular case and thus warranted a departure from otherwise consistent case law.

b) procedural expediency/abuse of procedure: the board recognised that the respondent/patent owner needed quite some prompting to finally come up with its late-filed request which addressed the point under discussion during the oral proceedings before the opposition division, but could not see an abuse of procedure therein, nor an unwarranted advantage for the respondent.

c) reasonable expectation that the opponents familiarise themselves with the proposed amendments in the time available: the minutes revealed that the oral proceedings had been conducted properly and towards the resolving of the outstanding issues, giving the opponent ample opportunity to familiarise itself with the amended subject-matter.

3.2 Substantive examination

It is established jurisprudence of the boards of appeal of the EPO that non-compliance with the requirements of Article 84 EPC, which is not a ground for opposition, can be contested in opposition appeal proceedings only if it arises from amendments to the patent. In T 589/09, the alleged lack of clarity arose from the incorporation of the technical feature of granted claim 4, which was dependent on granted claim 1, into independent claim 1. However, the incorporated feature did not interact with the other features of claim 1 in a way that modified the original meaning of the combination of features of granted claims 1 and 4. Hence, the board concluded that the alleged lack of clarity had already existed in the granted claims and did not arise from an amendment to the patent.

Moreover, the board could not share the view of the appellants that T 1459/05, in which it had been decided as an exception not to follow the established case law, was applicable in the case before it. In that specific case, the feature introduced into claim 1 had been deemed so unclear that it would not have been possible for the skilled person to understand how the claimed subject-matter had been limited by the added feature with regard to the cited prior art. In addition, an examination of novelty and inventive step of the modified subject-matter would have been extremely difficult or might not have led to a meaningful result. However, the present board saw no reason to depart from the established case law.

In the case before the board, the alleged lack of clarity concerned the use of the term "sugar" in claim 1 and the exact delimitation conferred on the claimed subject-matter, since other documents of the prior art attached to the term a meaning which was possibly broader than the one normally perceived by the skilled person. According to the board, though, it was evident that this type of formulation would not cause any additional lack of clarity that could not be overcome by a sound reading of the claim. As a consequence, the case at issue was not comparable to that decided upon in T 1459/05.

4. Right to be heard - opportunity to comment on new grounds of opposition

In T 2362/08, the board had to determine whether the patent proprietors' right to be heard according to Article 113(1) EPC had been safeguarded with regard to the decision of the opposition division on insufficiency of disclosure, namely whether the decision was based on grounds or evidence on which the patent proprietors had had an opportunity to present their comments.

While the ground of insufficiency of disclosure appeared in the notice of opposition, the objections of the opponents were merely based on two lines of argument, i.e. the lack of any reference in the granted claims to the specific process parameters listed in the patent and the lack of a definition for the term "precise" in one of the features pertaining to size and shape of the underlying invention. No further submission on insufficiency was filed by the opponents in writing and, before the oral proceedings took place, no further issue was raised by the opposition division. Specifically, in its communication accompanying the invitation to oral proceedings, the opposition division did not agree with the objections of the opponents, placed the burden of proof on them to establish that the skilled person would be unable to carry out the invention and noted that the opponents had not submitted any experimental evidence.

In its decision on insufficiency of disclosure, however, the opposition division did not follow up the points raised in the notice of opposition, but developed a completely different line of argument on a substantive issue of insufficiency of disclosure which was raised for the first time at the oral proceedings. Not only was the discussion during the oral proceedings directed to a completely new approach in respect of the issue of insufficiency of disclosure, but the patent proprietors had to face an unexpected reversal of opinion from the opposition division, which discharged the opponents of the burden of proof, thereby shifting it to the patent proprietors. The board could not consider the simple formal hearing of the patent proprietors on the issue at the oral proceedings to have been a proper opportunity for them to present their comments. By presenting the new legal and factual framework only at the oral proceedings and by coming to a final decision on the issue without first having given the patent proprietors a proper opportunity to respond, the opposition division did not respect their right to be heard and committed a procedural violation. This course of action led to the invalidity of all the requests filed by the patent proprietors before the oral proceedings and maintained by them at the start of the oral proceedings. Therefore a causal link existed between the non-observance of the right to be heard and the decision made, amounting to a substantial procedural violation by the opposition division in the case at hand.

E. Appeal procedure

1. Devolutive effect of the appeal

In T 448/09 the board observed that the devolutive effect of an appeal before a board extends only to the part of the impugned decision indicated in the notice of appeal as provided in Rule 99(1)(c) EPC. This in turn implies that the part of the impugned decision not indicated in the notice of appeal becomes final on expiry of the time limit for filing an appeal and cannot later become an object of the appeal proceedings. In the case at issue, the aspect of the decision relating to the apportionment of costs was not appealed and thus res judicata.

2. Procedural status of the parties

2.1 Rights of parties under Article 107 EPC

The respondent in T 1421/05 argued that an appeal filed by a universal successor of an opponent which had previously transferred away the assets in respect of which the opposition was filed is inadmissible, since the universal successor can have no interest in the proceedings and thus cannot be prejudiced within the meaning of Article 107 EPC by an order of the opposition division.

The board disagreed, noting that this proposition, if it held good, would apply not just in the special case of an appeal filed by a universal successor of an inter partes transferor, but also in the more general case of any appeal filed by an inter partes transferor. A party is prejudiced by a decision if it does not accede to one of its substantive requests: see e.g., T 234/86 (OJ EPO 1989, 79). This condition was clearly satisfied in the case at issue. It was not necessary for an opponent to have a continuing interest, financial or otherwise, in the prosecution of the opposition or appeal.

Thus, the appeal was admissible (see also Chapter VII.C. 4.1 and VII.E.4.3.1).

3. Extent of scrutiny

3.1 Binding effect of requests - no reformatio in peius

In T 1033/08, the board pointed out that, contrary to the respondent's view, G 1/99 (OJ EPO 2001, 381) did not supersede G 9/92 and G 4/93, but was complementary thereto in that it gave directions for allowing an exception to the principle of prohibition of reformatio in peius as defined in these decisions. However, the exception to this principle developed in G 1/99 did not apply in the circumstances of the case at issue. G 1/99 only dealt with the deletion of a limiting feature added during the opposition procedure. The exception to the principle of prohibition of reformatio in peius applied to this situation only.

In fact, in order to allow such a deletion which put the opponent and sole appellant in a worse situation than if he had not appealed, certain conditions had to be fulfilled. A limiting feature introduced during the opposition procedure had to be deleted. The necessity for its deletion had to be caused by the appeal. This meant that the deletion was necessary and appropriate because it was related to a ground of opposition and caused by new facts, evidence or arguments put forward by the appellant, or because of a different evaluation of the situation by the board of appeal. Without the deletion, the patent would have to be revoked. It was not possible to overcome the objection by introducing new features which limit the scope of the patent as maintained.

Only if these preconditions were fulfilled, might an objection be overcome by introducing new features which extended the scope of the patent as maintained, but within the limits of Article 123(3) EPC according to the second option of G 1/99.

The board in T 974/10 also referred to the exception allowed in G 1/99 in order to meet an objection put forward by the opponent/appellant or the board during the appeal proceedings, in circumstances where the patent as maintained in amended form would otherwise have to be revoked as a direct consequence of an inadmissible amendment held allowable by the opposition division in its interlocutory decision. In particular, the Enlarged Board of Appeal stated, "... if the patent cannot be maintained for reasons which were not raised at the first instance, the non-appealing proprietor deserves protection for reasons of equity" (emphasis added by the board in T 974/10).

As, in the case at issue, the clarity objection was raised by the board for the first time in the appeal, the respondent had to be allowed to file amendments as foreseen in decision G 1/99, which decision gave due regard to the principle of equity.

3.2 Subject-matter under examination

The board in T 1188/09 (citing T 123/85, OJ EPO 1989, 336) observed that it is settled case law that patent proprietors cannot irrevocably limit their patent by surrendering part of it during opposition proceedings. From this, the boards have established a further principle: an appellant/patent proprietor whose patent was revoked after being defended in limited form in the opposition proceedings cannot be prevented, on appeal, from seeking maintenance of the patent as granted (see also T 407/02). Opponents must therefore always be prepared for the possibility that a patent proprietor whose patent has been revoked by the opposition division will seek its restoration as granted on appeal.

Decision T 1018/02 expressly followed this approach, which was again upheld in T 386/04, where it was explained that supposedly contrary decisions had always been concerned with circumstances in which the amendment to the claim amounted to an abuse of the procedure. The appeal in the case at hand (T 1188/09) was thus admissible.

3.3 Review of first-instance discretionary decisions

A board of appeal, when reviewing the opposition division's exercise of discretion under Article 114(2) EPC, has the power to overrule a decision not to admit a late-filed ground of opposition, if the board concludes that the opposition division based its decision on manifestly incorrect technical assumptions or on an erroneous approach to applying said ground of opposition, since this amounts to a misuse of the discretionary power under Article 114(2) EPC (T 109/08).

4. Filing and admissibility of the appeal

4.1 Board competent to hear a case

In J 21/09 (OJ EPO 2012, 276), the following question was referred to the Enlarged Board of Appeal:

Is a technical board of appeal or the Legal Board of Appeal competent to hear an appeal against an EPO examining division's decision – taken separately from its decision granting a patent or refusing the application – not to refund search fees under Rule 64(2) EPC?

The board found that a decision taken under Rule 64(2) EPC as worded was not in itself a decision to refuse or grant a European patent application within the meaning of Article 21(3)(a) EPC. In view of the applicant's right of amendment alone, a search-fee refund decision was not necessarily connected with the actual grant or refusal decision. On that basis, the default provision of Article 21(3)(c) EPC would apply, meaning that the Legal Board was competent to hear appeals against such decisions.

Looking, however, at the whole appeal system under the EPC, and especially the role of the boards' technically qualified members (laid down in Article 21 EPC) in cases in which technical matters had to be decided, the board was not sure that this would be the right outcome. Decisions under Rule 64(2) EPC normally involved a technical issue, namely the unity of the claimed invention(s).

The legislator seemed never to have envisaged that decisions under Rule 64(2) EPC (Rule 46(2) EPC 1973) would be taken separately.

The case law on the competence issue facing the board was both sparse and to some extent divided. This gave rise to undesirable legal uncertainty.

The case is now pending as G 1/11.

4.2 Entitlement to appeal

4.2.1 Party adversely affected

According to Article 107 EPC "any party to the proceedings adversely affected by a decision may appeal". In the case before the board in T 193/07, the first-instance opposition proceedings had led to the revocation of the patent in its entirety as requested by opponent 2, who was therefore not adversely affected by the decision of the opposition division.

The board found that the purely hypothetical considerations put forward by the opponent in support of the admissibility of its appeal concerning potentially disadvantageous situations that might occur (in the future) in related national litigation proceedings had no legal relevance under Article 107, first sentence, EPC. Nor was the possibility of an anticipatory cross-appeal foreseen by the EPC (see e.g. T 854/02). A respondent/opponent which was not adversely affected by a decision revoking the patent was thus not entitled to file an appeal for the sake of acquiring an independent appellant status instead of the status of a respondent (party as of right). Moreover, the board's conclusion was in accordance with the established jurisprudence of the boards of appeal (see e.g. T 854/02, T 981/01, T 1147/01, T 1341/04 and T 473/98).

4.3 Form and time limit of appeal

4.3.1 Form and content of notice of appeal

The board in T 128/10 had held that the effective date of transfer of the patent to the appellant named in the notice of appeal had not actually occurred until after the period for filing a notice of appeal under Article 108 EPC. Following T 97/98, the board held that if, as in this case, an appellant declares that it was its true intention to file an appeal on behalf of the name given in the notice of appeal, there is no deficiency in the notice concerning the name of the appellant which may be remedied in accordance with Rule 99(1)(a) EPC in conjunction with Rule 101(2) EPC, nor an error which may be corrected pursuant to Rule 139, first sentence, EPC. The appeal had thus not been filed by a party to the proceedings which led to the decision under appeal and was inadmissible (see also Chapter VII.C.4.2).

In T 1421/05 it was held that an appeal filed by mistake in the name of an opponent who no longer exists but who has a universal successor, and which was obviously intended to be filed on behalf of the person who is the actual opponent and who was prejudiced by the decision, namely the universal successor, is admissible; if necessary the notice of appeal and statement of grounds of appeal may be corrected to record the name of the true appellant/opponent (see also Chapter VII.C.4.1 and VII.E.2.1).

In T 445/08 (OJ EPO 2012, ***) the following questions were referred to the Enlarged Board of Appeal:

(1) When a notice of appeal, in compliance with Rule 99(1)(a) EPC, contains the name and the address of the appellant as provided in Rule 41(2)(c) EPC and it is alleged that the identification is wrong due to an error, the true intention having been to file on behalf of the legal person which should have filed the appeal, is a request for substituting this other legal or natural person admissible as a remedy to "deficiencies" with the meaning of Rule 101(2) EPC?

(2) If the answer is yes, what kind of evidence is to be considered to establish the true intention?

(3) If the answer to the first question is no, may the appellant's intention nevertheless play a role and justify the application of Rule 139 EPC?

(4) If the answer to questions (1) and (3) is no, are there any possibilities other than restitutio in integrum (when applicable)?

The case is pending under G 1/12.

4.4 Statement of grounds of appeal

4.4.1 General principles

A statement of grounds of appeal can only be deemed such if it analyses the contested decision and does not merely refer to submissions lodged during the opposition proceedings (settled case law of the boards, e.g. T 220/83, OJ EPO 1986, 249 and T 213/85, OJ EPO 1987, 482). According to the board in T 95/10, there are three reasons for this:

First, the appeal procedure is not a continuation of the opposition procedure, but a distinct procedure in which any facts, evidence or arguments considered relevant must, if need be, be resubmitted (see G 10/91, OJ EPO 1993, 420; G 9/92 and G 4/93, both in OJ EPO 1994, 875).

Second, the appellant's analysis of the contested decision is needed in its statement of grounds of appeal because the legal dialogue between the board of appeal, the appellant and the respondent which is being sought on appeal can take place only if the appellant has at least addressed those reasons for the contested decision which it considers incorrect.

The third reason is that, in the absence of such an analysis, neither the board of appeal nor the respondent can establish why the appellant regards the contested decision as incorrect. It is, however, only based on this knowledge that the respondent can counter the appellant's arguments and that the board is in a position to reach an objective decision.

Nevertheless, an appellant's statement of grounds of appeal need not meet the above requirements if the opposition division's decision itself failed to analyse the facts and arguments submitted by the appellant during the opposition proceedings (which would already, in itself, constitute a substantial procedural violation), with the result that the appellant had no cause, and indeed was unable, to set out and substantiate those facts and arguments anew in the light of the opposition division's decision.

The statement of grounds of appeal in T 1707/07 dealt only with deficiencies pointed out by the examining division in the first-instance proceedings but which, according to the appealed decision, were not actually the reasons for refusing the application. Nor did the statement address the issues of the reasoning of the decision under appeal. Furthermore, the claims according to the two requests filed with the statement of grounds of appeal did not correspond to the claims according to the amended auxiliary request found in principle acceptable by the examining division. On the contrary, it was immediately apparent that claim 1 of these requests did not include the features identified in the decision under appeal as essential for overcoming objections against the former main request, the omission of which was given as a reason for refusing to consent to the amendments under Rule 86(3) EPC 1973.

Therefore, the mere fact of filing amended claims with the statement of grounds of appeal did not overcome the reasons for the refusal in the case at issue. The appellant's case for setting aside the decision under appeal did not address the reasons given in the decision under appeal and it was thus not clear to the board why the decision under appeal was alleged to be incorrect. The appeal was rejected as inadmissible.

5. Remittal to the department of first instance

5.1 Remittal following a substantial procedural violation

One of the members of the examining division which had granted the patent in suit was also subsequently the chairman of the opposition division in proceedings concerning the same patent, in contravention of Article 19(2) EPC. The board of appeal in T 1349/10 pointed out that violations of Article 19(2) EPC are considered to be substantial procedural violations which have led to a remittal of the case under Article 111(1) EPC and to the reimbursement of the appeal fee in several cases (see decisions T 251/88, T 939/91, T 382/92, T 476/95, T 838/02).

The board was aware that in two of these cases (T 251/88 and T 838/02) the boards had asked the appellant or all parties whether they invoked the procedural violation before they decided on the remittal. In both cases, the patent had been revoked by the opposition division. However, in the judgment of the board, violations of Article 19(2) EPC should lead to a remittal regardless of the parties' position, at least in situations where third parties were affected by the outcome of the defective first-instance proceedings. The decision under appeal had therefore to be set aside and the case remitted to the department of first instance.

6. Petition for review

6.1 General

The petitioner in R 20/10 argued that a violation of Article 113(1) EPC had occurred before the opposition division. The reasons justifying that conclusion had been set out by the petitioner in great detail in the appeal proceedings, and consequently the requirements of Rule 106 EPC had been fulfilled.

The Enlarged Board of Appeal disagreed. The purpose of creating the possibility of judicial review of decisions of the boards of appeal was to provide for an extraordinary and limited legal remedy for cases in which the proceedings before a board of appeal suffered from an intolerable procedural defect as defined in the EPC. The function of the petition for review was not to further the development of EPO procedural practice generally, or to ensure the uniform application of the law.

It followed that procedural defects which occurred in first instance proceedings could not be the subject of a petition for review. Decisions of the first-instance were subject to judicial review by the boards of appeal. The examination of an appeal included the examination of any procedural errors allegedly made by the first-instance. Thereafter, a party's right to a judicial review of first instance proceedings was exhausted. The petition was therefore rejected as inadmissible.

6.2 Obligation to raise objections in accordance with Rule 106 EPC

The Enlarged Board of Appeal stressed in R 3/11 that, under the provisions of Rule 106 EPC, a petition for review is admissible only where an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the board of appeal, except where such objection could not be raised during the appeal proceedings.

According to the Enlarged Board, raising an objection pursuant to Rule 106 EPC is a procedural act and, when it is possible, a precondition for access to review by the Enlarged Board. Review is an extraordinary legal remedy against final decisions of the boards of appeal. Therefore such an objection must be expressed by a party in such a form that the deciding body is able to recognise immediately and without doubt that an objection pursuant to Rule 106 EPC is intended. For the same reason, such an objection must be specific, that is the party must indicate unambiguously which particular defect amongst those exhaustively listed in paragraph 2(a) to (c) of Article 112a and Rule 104 EPC it intends to rely on. The petition for review was rejected as inadmissible, as the petitioner had not complied with the provisions of Rule 106 EPC. See also R 1/10 and R 17/10, where the petitions were rejected as inadmissible for the same reason.

6.3 Fundamental violation of Article 113 EPC

In R 3/10 the Enlarged Board of Appeal allowed the petition for review, set aside the decision under review and re-opened proceedings before the board of appeal.

The petitioner had alleged that its right to be heard under Article 113 EPC had been violated, as it had had no opportunity to comment on the inventive step of its main request - in the oral proceedings before the board, only the novelty of the main request was discussed. Before closing the debate the chairman had asked the parties whether they had any further comments, to which both parties had replied in the negative. The chairman had also informed the parties that the board would decide on the patentability of the main request. The board then held that the main request was novel but lacked an inventive step.

It appeared to the Enlarged Board of Appeal that, as a result of the board's statement that the issue of patentability would turn on novelty and inventive step, a very unfortunate misunderstanding had arisen. While the board may have intended to say that novelty and inventive step would be discussed together and decided together, that was not clearly expressed. The board's statement only told the parties that novelty and inventive step were both issues to be discussed and the petitioner had assumed accordingly that both those issues would be discussed before any decision was taken. The petitioner had presented arguments on novelty only, because he thought, understandably, that there would be an opportunity later to address the board on inventive step, in the event that the board should acknowledge novelty.

According to the Enlarged Board of Appeal, the term "patentability" covered a variety of potential objections; the chairman could not have meant to address all those objections when he used the term, since most of them had never been a subject of the appeal proceedings. Hence, it was clear to the Enlarged Board that the meaning to be attributed to the word "patentability" depended on the context in which it was used. The petitioner had no reason to assume that the board's decision would address more than had been previously discussed orally, i.e. novelty.

Nor was it relevant that the board did not deliberately deny the petitioner the opportunity to speak on inventive step. The members of the board clearly thought that the parties did not wish to make separate submissions on that issue and, once a formal decision on the main request had been given, there was no possibility for the board to reopen the debate on inventive step. The boards of appeal had constantly held that determining whether a substantial procedural violation justifying the reimbursement of the appeal fee had occurred in first-instance proceedings (Rule 103(1)(a) EPC) was to be decided exclusively on an objective basis.

In R 14/10 the petitioner argued that he could not have known, and was therefore surprised, that the requests as read out by the chairman of the board of appeal during the oral proceedings would be interpreted as his final requests. However, in the opinion of the Enlarged Board of Appeal, the fact that the chairman also read out the opponent's request "that the decision under appeal be set aside and that the European patent [...] be revoked" indicated beyond any reasonable doubt that, after the closure of the debate, the board intended to deliberate on the patentability of the claims at issue as discussed before and that, depending on the outcome of said deliberation, it could pronounce the revocation of the patent as a whole. The Enlarged Board pointed out that this could not be considered as a violation of Article 113 EPC. There was no obligation under the EPC to carry out the examination of a European patent application or patent in its entirety. The petition for review was therefore clearly unallowable. (See also Chapter 6.4 below).

In R 23/10 the Enlarged Board of Appeal agreed that the right to be heard under Article 113(1) EPC required that those involved be given an opportunity not only to present comments (on the facts and considerations pertinent to the decision) but also to have those comments considered, that is reviewed with respect to their relevance for the decision in the matter (see also R 19/10).

This view was not in conflict with the Enlarged Board's jurisprudence according to which, if the party concerned was aware of the arguments put forward by the other party, given an opportunity to answer them and had not contended that the board of appeal had refused to hear it, that was sufficient for the purposes of Article 113(1) EPC (see especially R 18/09): this finding referred to cases that involved checking if the reason why one of the parties had not commented (on facts and considerations pertinent to the decision) was because they had been prevented from doing so by objective circumstances (as established in R 7/09) or how the board of appeal had conducted the proceedings.

In the case at issue, it was very clear that the petitioner had had an opportunity to and did present comments. What it claimed rather was that its comments on one of the issues central to the decision had been misunderstood by the board of appeal and therefore not considered in the decision-making process. This contention however had no basis whatsoever and the petition for review was rejected as manifestly unallowable.

In R 11/11 the petitioner argued that the non-admission of its new requests, which had been filed in time with the statement of the grounds of appeal, violated its right to be heard. The petitioner did not argue that a board did not have discretion under Article 12(4) RPBA to hold inadmissible requests which could have been presented in the first-instance proceedings. Rather, the Enlarged Board understood the petitioner to be arguing along two lines. First, that the petitioner could not have presented the requests in the first-instance proceedings since it was taken by surprise and did not know the reasons for the opposition division's view. There was therefore no proper basis for the exercise of the discretion. Second, the discretion was not in any event properly exercised.

As to the first line of argument, the Enlarged Board found that the petitioner's right to be heard could not have been infringed in this respect since it was not disputed that the issue of admissibility of the requests was debated during the oral proceedings held before the board of appeal. Even if the board had been wrong to consider that the requests could have been presented in the first-instance proceedings, this could not form a basis of a complaint that the petitioner's right to be heard was not respected. The Enlarged Board could not in petition proceedings act as a third-instance or second-tier appellate tribunal (see e.g. R 1/08 and R 9/10).

As to the second line of argument, the jurisprudence of the Enlarged Board of Appeal under Article 112a EPC had made it clear that a petition may only be used as a vehicle to review the merits of a decision relating to a procedural issue if one of the procedural defects listed in Articles 112a(2)(a) to (d) was alleged to have occurred (see e.g. R 20/10). This applied all the more to an attempt to have the Enlarged Board review the way in which a judicial body such as a board of appeal had exercised its discretion in relation to a procedural matter (see R 10/09).

6.4 Any other procedural defect

In R 14/10 the Enlarged Board agreed with the petitioner that in cases where a party's request is considered unclear it is the duty of the deciding body to ask for clarification before deliberation. However, in the case at issue, the chairman of the board had read out the requests of the parties, before declaring the debate closed, in conformity with Article 15(5) RPBA. According to established practice, the closing of the debate then marked the last moment in the oral proceedings at which the parties could still have made submissions (see G 12/91). Thus, if the requests as read out by the chairman did not correspond to the petitioner's intention, it was his duty to intervene at that point. From the fact that the petitioner did not do so, the board was entitled to conclude that the requests as read out corresponded to his intentions. There was therefore no violation of Article 113(2) or Rule 104(b) EPC as alleged.

In R 19/10 the Enlarged Board of Appeal pointed out that it is not a procedural duty of the boards of appeal under Rule 104(b) EPC to analyse the submissions of the parties in order to identify potential requests which were not explicitly made by the parties.

In R 16/10 the petitioner submitted that the wording of Article 24(1) EPC, concerning the exclusion of members from a board under certain circumstances, included not only the specific situation where one of the members had represented a party in the case in question but also the general situation where a member had previously acted as representative of that party in any matter.

The Enlarged Board disagreed. While the English text (as amended under the EPC 2000) remained less clear than that of the other two versions, when read as a whole it became unambiguously clear that it dealt with three separate cases each governed by the words "in a case in which". Further, this paragraph could not be given a different meaning in English to that in the two other languages. It was clearly stated in the German and French versions that the cause of exclusion related to the involvement in the particular case in question and not to any past representation.

Accordingly, the meaning of the English text of Article 24(1) EPC taken as a whole, in its proper context and with respect to the text of the other two languages, was clear. The petition based on the alleged breach of Article 24(1) EPC was clearly unallowable.

7. Amended claims in appeal proceedings

7.1 Article 12(4) RPBA

7.1.1 Introduction

Several decisions refer to Article 12(4) RPBA, according to which requests which could have been presented or were not admitted in the first-instance proceedings can be held inadmissible. The decisions point out that the primary purpose of an appeal is to provide the opportunity for a final-instance review of the decision of a previous instance, thereby (in inter partes proceedings) allowing the losing party to challenge the decision of an opposition division on its merits and to obtain a judicial ruling as to whether the decision of the opposition division is correct (G 9/91 and G 10/91, OJ EPO 1993, 408, 420). Appeal proceedings are not about putting forward an entirely fresh case.

7.1.2 Patent proprietor withholding claim requests in opposition proceedings

In T 1067/08 the patent in suit was revoked for non-compliance with Article 113(2) EPC, following the opposition division's decision not to admit the proprietor's sole request as filed during the oral proceedings and the subsequent refusal of the proprietor to amend that request and/or to file auxiliary requests. With the statement of grounds of appeal the appellant filed a main request which was identical to the sole request not admitted in opposition proceedings.

The board stated that appeal proceedings were not just an alternative way of dealing with and deciding upon an opposition and that parties to first-instance proceedings were not at liberty to bring about the shifting of their case to the second instance as they pleased, and so compel the board of appeal either to give a first ruling on the critical issues or to remit the case to the department of first instance. Conceding such freedom to a party (and/or to the department of first instance) would run counter to orderly and efficient proceedings. In effect, it would allow a kind of "forum shopping" which would jeopardise the proper distribution of functions between the departments of first instance and the boards of appeal and would be absolutely unacceptable for procedural economy generally. In order to forestall such abusive conduct, Article 12(4) RPBA provides that the board has the power to hold inadmissible any requests which were not admitted in the first-instance proceedings.

The board decided not to admit the main request into the appeal proceedings and stated that the exercise of the powers under Article 12(4) RPBA might also be justified where a party's conduct - e.g. maintaining a single request which the opposition division had declined to admit into the proceedings as an abuse of procedure, and refusing to file amended and/or auxiliary requests - had in effect prevented the department of first instance from giving a reasoned decision on the critical issues, thereby compelling the board of appeal either to give a first ruling on those issues or to remit the case to the department of first instance.

In T 144/09, about one month before oral proceedings in opposition proceedings the patent proprietor added a new feature "space requirement..." into the requests. During the oral proceedings the opposition division raised an objection under Article 123(2) EPC concerning the inclusion of this feature. It asked the patent proprietor explicitly whether he would file any request that would overcome the objection. However, he didn't file any amended or auxiliary requests. Thus, the patent was revoked. With the statement of grounds of appeal the patent proprietor filed new requests without the space requirement feature.

The proprietor's choice not to file any amended or auxiliary requests in the light of these circumstances was found by the board to be of importance in considering the admissibility of the new requests in the appeal proceedings. The board stated that no reason could be seen for not having simply deleted the objected feature by way of an auxiliary request during the oral proceedings before the opposition division. Article 12(4) RPBA allows the board to hold any such request inadmissible if it could have been presented in the first-instance proceedings. A request can be held inadmissible under Article 12(4) RPBA when added subject-matter held unallowable during proceedings before the opposition division is not removed at least by way of an auxiliary request filed in those proceedings, but only by way of a request filed during the appeal proceedings (see also R 11/11 regarding the appellant's petition for review on this matter).

Furthermore, the board noted that the applicability of Article 12(4) RPBA is not restricted by the time limit for filing the grounds of appeal or any reply thereto. Indeed, a restriction in that sense would not seem to serve any useful purpose and might even result in a possibility of artificially circumventing Article 12(4) RPBA, irrespective of whether Article 13(1) RPBA might be a further provision of the rules of procedure which could provide a different barrier to filing such requests.

In T 23/10 the respondent argued that the appellant could and should have presented during opposition proceedings amended requests in which the contested claim 11 of the previous main request was deleted. The opposition division's minutes of the oral proceedings showed that the appellant was asked whether he had any further requests. The appellant announced that he had no further requests. With the statement of grounds of appeal the appellant filed auxiliary requests 8 to 15, and dependent claim 11 was deleted.

The board stated that to admit auxiliary requests 8 to 15 into the appeal proceedings would allow the appellant to take advantage of its inconsistent conduct of the proceedings; the appellant could complete its case on appeal and thus extend the scope of discussion as determined by the decision under appeal. Since the appeal board cannot be expected, as a review instance, to deal with all the outstanding issues after the amendment of the appellant's case, admission of auxiliary requests 8 to 15 into the proceedings would give the appellant the opportunity to compel the board to remit the case. When exercising its discretion under Article 12(4) RPBA, the board is required to prevent the use of the appeal procedure in a way which runs counter to the interest in a fair and reliable conduct of judicial proceedings. A patentee withholding claim requests in opposition proceedings is precluded from having those requests admitted on appeal, since the patentee would otherwise be permitted to disadvantage the adverse parties by conducting appeal proceedings contrary to its actions before the opposition division.

7.1.3 Feature reintroduced in appeal proceedings

In T 1969/08 the board stated that if a feature objected to as "obscure" by the examining division and omitted from all requests subsequently filed by the applicant is then reintroduced in the claims filed one month before oral proceedings in the appeal proceedings without commenting on the objection raised earlier against this feature, the board may refuse to admit these claims into the proceedings at its discretion under Article 12(4) RPBA. Furthermore, according to the established case law of the boards of appeal, it is relevant whether the respective versions of the sets of claims converge or diverge, i.e. whether the claimed subject-matter of the independent claims of a main request goes in the same direction and further specifies the same alleged inventive aspect (T 1685/07, T 240/04). The board concluded that the added feature of the amended claim concerned a technical problem which was only remotely related to the original one linked to the deleted feature and decided not to admit the request.

7.1.4 Non-attendance at oral proceedings

In T 1587/07 the board referred to the established case law that an appellant who submits amended claims shortly before the oral proceedings and subsequently does not attend these proceedings must expect a decision based on objections which might arise against such claims in his absence (T 602/03). Therefore, an appellant who submits new claims after oral proceedings have been arranged but does not attend these proceedings must expect that the board decides that the new claims are not allowable because of deficiencies, such as lack of clarity (T 991/07 and T 1867/07) or lack of inventive step (T 1704/06). However, it was the board's view that the appellant had to also expect a decision not admitting a new request into appeal proceedings pursuant to Article 13 RPBA in his absence. This is particularly the case if the appellant's attention was drawn to the provisions of Article 13 RPBA in the communication.

The board stated that in the ex parte case before it, due to the appellant's absence in the oral proceedings, relevant issues regarding Article 13 RPBA could not be discussed with the appellant, the reason for reintroducing features which were deleted in first-instance proceedings at a late stage of the appeal proceedings. However, a duly summoned appellant who by his own volition did not attend the oral proceedings could not be in a more advantageous position than he would have been if he had attended. The voluntary absence of the appellant could not therefore be a reason for the board not to raise issues it would have raised if the appellant had been present.

The board considered it appropriate, when exercising its discretion under Article 13(1) RPBA, also to take into account the provisions of Article 12(4) RPBA, which applies all the more to requests that were filed and subsequently withdrawn in the first-instance proceedings, since such a course of events clearly shows that these requests could have been presented in the first-instance proceedings. These criteria, which are applied by the board when exercising its discretion under Article 12(4) RPBA, can also be applied by the board when exercising its discretion under Article 13(1) RPBA (see also similar case T 1403/07).

7.1.5 Additional search required

In T 2127/09 the application related to a computer game like "Tetris". The search division considered that the claimed subject-matter was merely an obvious implementation of game rules on known hardware and did not carry out a search. At the oral proceedings before the board the appellant (applicant) submitted an amended set of claims as sole request in response to the board's objections. The board stated that, since the search division had not carried out a search, it was unable to finally assess whether the claimed subject-matter involved an inventive step. This fact was clearly not dependent on the degree of lateness of the applicant's amendment, it was primarily the result of the search division's decision that no search should be carried out, so that only unsearched matter could be used by the applicant for amending the claims.

Thus it was necessary to carry out an additional search in accordance with Rule 63 EPC. The board emphasised that remittal should be seen as an exceptional procedural possibility, and that it had also to be examined whether the applicant could have been expected to have made earlier the amendments which were made during the appeal before the board (see Article 12(4) RPBA), and thereby could have requested the examining division to perform the necessary search.

The board noted that the applicant had not filed any auxiliary request before the examining division, and therefore the question arose whether the appellant could have been expected to file these amendments at least by way of an auxiliary request. The assumption of a general obligation to file auxiliary requests - in the sense that the party must fear adverse procedural consequences if he does not - appeared problematic to the board. If one were to recognise this as a procedural obligation, one had immediately also to answer the question: how many auxiliary requests were then "expected", given that it was also the established jurisprudence of the boards that too many auxiliary requests could be seen as an abuse of procedure. On the other hand, it was also clear that parties had no entitlement to a remittal as of right. This meant that a party restricting itself to a single request before the first instance had to be prepared for the possibility that he would not be able to present further requests and have them examined. The board decided to admit the amendments to the claims.

7.2 Criteria applied in the assessment of late-filed claims

In T 1634/09 the auxiliary request was filed after oral proceedings had been arranged; it thus constituted an amendment to the party's case within the meaning of Article 13(1) RPBA. The board stated that, according to an approach frequently adopted by the boards (see e.g. T 5/10), such a request could be admitted and considered at the board's discretion if

i) sound reasons existed for filing this request so far into the proceedings (this might be the case when amendments were occasioned by developments during the proceedings),

ii) the auxiliary request did not extend the scope of discussion as determined by the grounds of appeal and the respondent's reply (in this respect, it was noted that under Article 12(2) RPBA the grounds of appeal and the reply must contain a party's complete case),

iii) the auxiliary request was clearly or obviously allowable (this meant that it had to be immediately apparent to the board, with little investigative effort on its part, that the amendments made successfully addressed the issue raised without giving rise to new ones).

In the case at issue, none of the above conditions was met.

In T 1168/08 the appellants' auxiliary requests were submitted about two weeks before the oral proceedings and more than two years after having received the reply of the respondents to the statement setting out the grounds of appeal.

The board stated that the appellants' justification for the late filing of the new requests, namely that they had been filed in reaction to the board's communication, was not acceptable here, because the argumentation in support of the board's preliminary opinion that the claimed subject-matter had no basis in the application as originally filed and lacked novelty corresponded in substance to the reasoning of the respondent in reply to the grounds of appeal.

A board communication under Article 15(1) RPBA is intended as guidance for the oral proceedings. It helps the parties to focus their argumentation on issues that the board considers crucial for reaching its decision. Where the board's communication contains a preliminary opinion based solely on the issues raised by the parties and their arguments, that communication cannot be taken as a justification for submitting new requests that the parties could have filed earlier. In the case at issue, the appellants, at the latest after having received the submissions of respondents, should have submitted one or more additional set(s) of claims in order to overcome those objections if they considered it necessary. They chose, however, not to file any such request.

8. Reimbursement of the appeal fee

In T 2006/08 the appellant/patent proprietor requested reimbursement of the appeal fee. The appellant submitted that the opposition division, having twice issued a favourable opinion on sufficiency of disclosure, had come to a negative conclusion only at the oral proceedings based on the same facts and evidence that were previously on file. Moreover, the patentee was deprived of the possibility of providing experimental data to overcome the alleged deficiency of the patent and it was left with the only possible remedy of appeal.

The board found that although the opposition division had expressed an opinion on the issue of sufficiency of disclosure in favour of the patentee in two communications, this opinion was clearly labelled as being preliminary and non-binding. It was also worth noting that the opponent had then filed further submissions maintaining its objections raised under Article 83 EPC and developing its arguments further. To this extent, the appellant could have legitimately expected that the opponent would try to reverse the preliminary and non-binding opinion of the opposition division during the oral proceedings.

The board also held that a preliminary, provisional (positive) opinion did not prevent a party from making its complete case. It was the responsibility of a party to ensure that the facts and evidence filed were not only unequivocally clear but also as complete as possible. If a party decided to retain or not to file further evidence to support its case, it would run the risk that an adverse decision might be issued based only on the available (incomplete) evidence on file. The board rejected the request for reimbursement of the appeal fee.

VIII. INSTITUTIONAL MATTERS

1. Legal status of the EPO boards of appeal

In R 1/10 the two petitioners explained that they had expressly asked the board for a preliminary communication in the appeal proceedings to give them enough time to submit necessary auxiliary requests. However, the board had given them no indication of how it viewed the case before or after the summons to oral proceedings, or indeed at any time during those proceedings. Furthermore, their request to postpone the oral proceedings had been refused.

In the petitioners' view the board had failed to consider that, in the absence of any knowledge of the board's preliminary assessment of the case, they could not submit in-depth comments and new auxiliary requests in good time. The petitioners referred inter alia to opinion 1/09 of the Advocate General of the Court of Justice of the European Union (CJEU) delivered on 2 July 2010 relating to the introduction of the Community patent, in which she found that the conditions for an independent judiciary were not met by the boards of appeal of the EPO. Access to an independent judiciary, however, was enshrined as an absolute legal right in Article 6(1) of the European Convention on Human Rights (ECHR).

The Enlarged Board of Appeal observed that, based on the principles of the separation of powers, the legality of all state action and respect for human rights, which were constitutive of any system governed by the rule of law, it could not accept the concerns raised by the petitioners as to whether the EPO boards of appeal were set up as required by the rule of law, in particular in terms of their judicial independence. Contrary to the view expressed by the petitioners and the Advocate General, several high-ranking national courts of EPC contracting states had in the past declared the boards of appeal to be independent courts based on the rule of law and recognised their decisions as those of such a court which they took into consideration when developing their case law. In its opinion G 3/08 (OJ EPO 2011, 10), the Enlarged Board had also set out why, under the EPC, the boards of appeal were an independent judiciary within the European patent system based on the principle of the separation of powers.

A stay of the current review proceedings pending the issue of the requested CJEU opinion on the compatibility of the draft agreement on the creation of a European Patent Court was furthermore out of the question. A CJEU decision finding that the boards of appeal lacked the independence required of a judicial body adhering to the rule of law was not binding on the boards, as the EPC was not a piece of EU legislation. Rather, it founded, in the European Patent Organisation, an autonomous entity governed by international law and inherently independent of the EU, with a membership including not only all EU states but also various non-EU states.

2. Ordinances on the extension of European patents

2.1 The legal nature of extension agreements

The boards of appeal have stated that the extension system largely corresponds to the EPC system operating in the EPC contracting states, except that it is not based on direct application of the EPC but on national law modelled on the EPC. The national law of the extension state governs the extension proceedings and the legal effects of the extension (see T 7/07, see also Chapter I.B.1.3 and VII.C.2).

In T 1196/08, SC contended, in support of its notice of intervention under Article 105(1)(a) EPC, that the Romanian patent resulting from the extension of a European patent had to be seen as the same as a European patent granted under the EPC.

The board did not agree. As used in Article 105(1)(a) EPC, the term "the same patent" meant a European patent within the meaning of Article 2(1) EPC 1973. The board explained that, although the extension procedure largely corresponded to the EPC system operating in the EPC contracting states, its legal force derived not from direct application of the EPC but solely from national law modelled on the EPC. While there were certain parallels between the extension system and the European patent system, fundamental differences still existed between the two. The extension system, including all the conditions and legal effects of extension, was based exclusively on the application of national law unless express reference was made to the EPC. By contrast, the European patent system and the effects of a European patent in the contracting states relied solely on the direct application of the EPC, even if certain provisions of the EPC referred to national law. According to the board, the extension of a European patent under the national law of the extension state meant that the European patent had the effect of a national patent, while designation under Article 79 EPC 1973 meant that the patent was granted by the EPO on the basis of the EPC and with effect for the designated contracting state. In view of this different legal situation, the board concluded that a patent extended to the territory of an extension state was not a European patent within the meaning of Article 2(1) EPC 1973. Furthermore, the provisions of the Romanian extension ordinance did not refer to the provisions of Article 105 EPC. The references in the Romanian extension ordinance to the provisions of the EPC being exhaustive, there could be no question of application of Article 105 EPC by analogy (see also Chapter VII.C.2 and 3).

2.2 Jurisdiction of the boards of appeal

In J 22/10 the board stated that the Legal Board of Appeal had decided in a number of cases that decisions taken by the EPO when carrying out its obligations under the co-operation agreements with certain states extending the protection conferred by European patents (extension agreements) were based not on the EPC itself but solely on the co-operation agreements between the European Patent Organisation on the one hand and the extension states on the other hand; it therefore rejected the respective appeals as inadmissible (J 14/00, OJ EPO 2002, 432; J 19/00; J 9/04 of 1 March 2005; J 2/05; J 4/05). The board noted that it followed from the very nature of the extension agreements relevant in these appeal proceedings that any decisions based on such international treaties did not fall within the scope of the EPC and, as a result of this, were not subject to the jurisdiction of the boards of appeal. The extension agreements made it absolutely clear that references to provisions of the EPC were exhaustive and, thus, that there could be no corresponding application of other provisions, including those of Articles 106 ff EPC. EPC concerning the appeals procedure. In other words, the Legal Board of Appeal was not competent to decide a case that was governed solely by a "foreign" legal system.


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