new decisions of the technical boards of appeal tape drive comprising two stepper motors (14,15),...
TRANSCRIPT
1 Life Science IP Seminar 2017
Dr. Leonard Werner-Jones
Dr. Ursula Kinkeldey (Retired Chairwoman 3.3.04 Board of Appeal)
New Decisions of the Technical Boards of
Appeal
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EPO Board of Appeal Statistics
2015-2016 Technical Cases at the EPO
Board of Appeal Cases
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EPO Case Law
Select EPO Board of Appeal Cases
2015 – 2016: publication date of documents; public availability; novelty;
sufficiency of disclosure; clarity; claim interpretation; added matter;
admissibility of late filed facts, evidence, and arguments; addmissibilty
of appeals; errors in the text of a patent as granted; renewal fees; etc.
• Novelty: T 437/14 and T 2369/10.
• Sufficiency: T 1727/12 , T 2220/14, T 1329/11, T 1164/11, T 1846/10,
and T 437/14.
• prima facie relevance: G 1/84, G 3/14, T 2542/10, T 1119/05, and T
971/11.
• Admissibility of Late Filed Facts, Evidence, and Arguments: T
2471/13, T 450/13, T 241/10, T 2393/13, T 2054/11. T 1621/09,
and T 55/11.
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EPO Case Law
….
**Immediately effective starting on 1 July 2017.
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Article 53(b) EPC
European patents shall not be granted in respect of:…
(b) plant or animal varieties or essentially biological processes for the production of plants or animals.
Rule 27(b) EPC
Biotechnological inventions shall also be patentable if they concern:…
(b) plants or animals if the technical feasibility of the
invention is not confined to a particular plant or animal variety.
EPO Case Law
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G2/07 and G1/08
• Addressed question of Art. 53(b) EPC: “essentially biological processes for the production of plants or animals”
• Answer: If the “introduction or modification of {a} trait is not the result of the mixing of the genes of the plants chosen for sexual crossing, then the process is not excluded from patentability under Article 53(b) EPC.”
EPO Case Law
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G2/12 and G2/13
(Tomato II and Broccoli II)
• In the same cases as previously addressed for G2/07 and G1/08, the claims were later reduced to product-by-process claims.
• Question: “is a claim directed to plants or plant material other than a plant variety allowable even if the only method available at the filing date for generating the claimed subject-matter is an essentially biological process for the production of plants disclosed in the patent application?”
EPO Case Law
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G2/12 and G2/13
(Tomato II and Broccoli II)
• Answer: “The exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit.”
EPO Case Law
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EPO Case Law
European Commission
• “patentability of such products runs into potential
conflict with the legal protection provided to plant
varieties under EU plant variety legislation as
regards access to genetic resources”
• December 2015, EU Parliament asked the
European Commission to comment on the
patentability of products derived from essentially
biological processes.
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EPO Case Law
EPO
98/44/EC
G2/07 & G1/08
G2/12 & G2/13
Stay of Cases
Admin. Council
Implementing
Regulations
EU
98/44/EC
European
Commission
National
Courts
CJEU
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Article 53(b) EPC
European patents shall not be granted in respect of:…
(b) plant or animal varieties or essentially biological processes for the production of plants or animals.
Rule 27(b) EPC
Biotechnological inventions shall also be patentable if they concern:…
(b) without prejudice to Rule 28, paragraph 2, plants or
animals if the technical feasibility of the invention is not confined to a particular plant or animal variety.
EPO Case Law
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Rule 28(2) EPC
(2) Under Article 53(b), European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process.
EPO Case Law
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EPO Case Law
Tomatoes and Broccoli
Open discussion and comments: Dr. Kinkeldey
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Novelty
Novelty (2016 – 2017)
Novelty:
• T 437/14 – non-enabled prior art
• T 2369/10 – medical use device claims
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Novelty
Novelty: T 437/14
(*Decision from 17 October 2016)
Claim 1 of EP 1 933 395 B1:
1. Phosphorescent organometallic compound of formula L2IrX,
wherein
L and X are inequivalent bidentate ligands,
X is a monoanionic bidentate ligand;
and
the L ligands are monoanionic bidentate ligands each
coordinated to Ir (iridium) through an sp2 hybridized carbon
and a heteroatom.
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Novelty
Novelty: T 437/14
(*Decision from 17 October 2016)
Point 5.4.4 of the “Reasons for the Decision”: In this respect
the board has no reason to doubt the proprietor's explanation
during the oral proceedings that the reaction of D6 was
kinetically driven and that the rate-determining step was the
first step in the reaction scheme depicted in D6, i.e. the
reaction of Iracac3 to Irppyacac2, with the subsequent
substitution of the further two acetylacetonate ligands being
so fast that an isolation of the "intermediate“ Irppy2acac
was impossible. (emphasis added)
* T392/06 and T 327/92: intermediate product is enabled if it is
a "discrete product“ vs. the "transient product“ of D6.
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Novelty
Novelty: T 2369/10
(*Decision from 13 November 2015)
Claim 1 of EP 1 853 345 Main Request in Appeal:
Neurostimulator system for treating a patient having a
substance addiction to alleviate a symptom of the substance
addiction, the neurostimulator system
comprising an electrode configured for directly
coupling to a cranial nerve of the patient and applying
an electrical signal to said cranial nerve.
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Novelty
Novelty: T 2369/10
(*Decision from 13 November 2015)
Point 7.5 of the “Reasons for the Decision”: … The Board has
failed to find any mention of medical uses of devices in the
Travaux Préparatoires of the EPC 2000, even although Article
54 was subject to a major revision in which the practice of
G 5/83 was formally codified in Article 54(5) EPC.
(emphasis added)
Point 8.1 of the “Reasons for the Decision”: … In the present
case, the Board holds that, having regard to the wording of
Article 54(4),(5) EPC, the ordinary meaning of this Article shall
not be extended so as to include something which is not
explicitly provided for. (emphasis added)
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Novelty
Novelty (2015 – 2016)
Open discussion and comments: Dr. Kinkeldey
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Sufficiency
Sufficiency (2015 – 2016)
Sufficiency:
• T 1727/12 – burden of proof / working requirement
• T 2220/14 – burden of proof / working requirement
• T 1329/11 – burden of proof / working requirement
• T 1164/11 – burden of proof / working requirement
• T 1846/10 – working requirements / undue burden
• T 0437/14 – functional features
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Sufficiency
Sufficiency: T 1727/12 (*Decision from 09 November 2015)
Claim 1 of EP 1 360 287 B1:
1. A tape drive comprising two stepper motors (14,15), two
tape spool supports (8,12) on which spools of tape (7,11) may
be mounted, each spool being drivable by a respective one of
said stepper motors (14, 15), and a controller (17) for
controlling the energisation of the motors […], wherein the
controller (17) is operative to energise both motors (14, 15) to
drive the spools of tape […] and to control the motors (14, 15)
to maintain the monitored tension between predetermined
limits.
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Sufficiency
Sufficiency: T 1727/12 (*Decision from 01 February 2016)
Point 1.1 of “The Reasons for the Decision”:
A principle intrinsic to EPO proceedings is that the party who
raises an objection bears the burden of proving it (see
"Case Law of the Boards of Appeal of the EPO", 7th edition,
2013, III.G.5.1.1). The application of this principle to
opposition proceedings leads to the conclusion that the
burden of proof in respect of the grounds for opposition raised
by an opponent lies on the opponent. (emphasis added)
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Sufficiency
Sufficiency: T 2220/14 (*Decision from 09 November 2015)
Claim 1 of EP 1 360 287 B1:
1. A method of modifying an endogenous immunoglobulin
variable region gene locus in an isolated mouse embryonic
stem (ES) cell […], said method comprising:
a) obtaining a large cloned genomic fragment […];
b) using bacterial homologous recombination to genetically
modify the cloned genomic fragment of (a) to create a large
targeting vector for use in a mouse ES cell (LTVEC);
c) introducing the LTVEC of (b) into a mouse ES cell […]; and
d) using a quantitative assay to detect modification of allele
(MOA) in the mouse ES cell of (c) […].
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Sufficiency
Sufficiency: T 2220/14 (*Decision from 09 November 2015)
Point 63. of “The Reasons for the Decision”:
The respondents have not presented convincing evidence that
this would be the case, their main argument being that
Example 3 is a "prophetic“ example. However, there is no
requirement in the EPC that, either at the priority or filing date,
the applicant must have carried out the claimed invention. The
requirement of Article 83 EPC is that a person skilled the art,
following the teachings in the application as filed
supplemented with his/her common general knowledge and
with a reasonable amount of experimentation, including some
trial and error, would be able to carry out the invention as
claimed at the relevant date. (emphasis added)
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Sufficiency
Sufficiency: T 1329/11 (*Decision from 19 November 2015)
Claim 1 of EP 1 577 673 B1:
1. A method for diagnosing the risk of a patient, who shows no
symptoms of a cardiovascular disease according to the NYHA
classification and who has no history of cardiovascular complication,
of suffering from a cardiovascular complication as a consequence of
a future increase intravasal volume, comprising the steps of
a) measuring, in vitro, the level of a natriuretic peptide from the
group of ANP, or NT-proANP and/or BNP, or NT-proBNP
b) diagnosing the risk of the patient by comparing the measured level
to at least one known level(s) associated with different grades of risk
in a patient.
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Sufficiency
Sufficiency: T 1329/11 (*Decision from 19 November 2015)
Point 3.9 of “The Reasons for the Decision”:
The board also cannot accept the respondents' argument that
the claimed invention was sufficiently disclosed because the
appellant did not present verifiable facts that it did not
work. Although generally, the burden of proof in the framework
of sufficiency of disclosure lies with the appellant, this
principle does not apply to cases like the present one, where
the application as filed does not provide a single example or
other technical information from which it is plausible that
the claimed invention can be carried out. (emphasis added)
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Sufficiency
Sufficiency: T 1164/11 (*Decision from 18 February 2015)
Claim 1 of EP 1 752 190 A1:
1. A medical apparatus for cutaneous administration of medicaments
comprising:
- a supporting frame (100);
- an energy emitter (9) in engagement with the frame (100) and
active on the molecules of at least one medicament to cause
penetration of same into a skin region to be treated (10); and
- a medicamentous solution (3) adapted to be positioned between the
energy emitter (9) and the skin region to be treated (10), said
solution (3) comprising a matrix containing said medicament,
characterized in that said energy emitter (9) is not an emitter of
electric energy.
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Sufficiency
Sufficiency: T 1164/11 (*Decision from 18 February 2015)
Point 2 of “The Reasons for the Decision”:
The requirement of sufficiency of disclosure in Article 83 EPC
is based on the consideration that the grant of a patent is only
justified if the information comprised in the patent application
and generally available technical knowledge enable the
skilled person successfully to put into practice the subject-
matter of the claimed invention. It is not the purpose of the
patent system to grant a monopoly for technical speculations
that cannot be realised at the time of filing. (emphasis
added)
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Sufficiency
Sufficiency: T 1846/10 (*Decision from 12 March 2015)
Claim 1 of EP 1 645 567 B1:
1. A method for producing a live vaccine against L. intracellularis
comprising the steps:
(1) cultivating the L. intracellularis bacteria to obtain culture cells
infected with L. intracellularis;
(2) incubating said infected cells at an oxygen concentration of less
than about 18 percent while maintaining said infected cells in
suspension;
(3) harvesting the L. intracellularis bacteria; and
(4) admixing the L. intracellularis bacteria with an acceptable
pharmaceutical carrier.
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Sufficiency
Sufficiency: T 1846/10 (*Decision from 12 March 2015)
Point 43 of “The Reasons for the Decision”:
… the board, having regard to the facts and arguments
presented to it, concludes that no evidence has been provided
that by following the teaching of the contested patent the
person skilled in the art would succeed in producing an
attenuated L. intracellularis strain. On the contrary, example 5
constitutes evidence that he would fail and thus raises
serious doubts that the invention can in fact be carried out by
the average person skilled in the art without undue
experimentation or inventive skills. (emphasis added)
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Sufficiency
Sufficiency: T 437/14
(*Decision from 17 October 2016)
Claim 1 of EP 1 933 395 B1:
1. Phosphorescent organometallic compound of formula L2IrX,
wherein
L and X are inequivalent bidentate ligands,
X is a monoanionic bidentate ligand;
and
the L ligands are monoanionic bidentate ligands each
coordinated to Ir (iridium) through an sp2 hybridized carbon
and a heteroatom. (Emphasis added)
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Sufficiency
Sufficiency: T 437/14 (*Decision from 17 October 2016)
Point 4.1 of the “Reasons for the Decision”:
Sufficiency of disclosure may for instance be acknowledged if
all embodiments defined by the structural feature(s) of the
claim also meet the claimed functional requirement(s). If this is
not the case, sufficiency may still be acknowledged if the
common general knowledge at the priority date of the patent,
or the patent itself, provides the skilled person with sufficient
guidance on how to select those compounds, out of the host
of compounds defined by the structural feature(s) of the claim,
that also meet the claimed functional requirement(s).
(emphasis added)
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Sufficiency
Sufficiency: T 437/14 (*Decision from 17 October 2016)
Point 4.4 of the “Reasons for the Decision”:
Firstly, the patent contains numerous examples of specific
compounds having structures as required by claim 1 which are
phosphorescent (figures 8, 10, 12, 14, 16, 17, 19, 21, 25, 26,
27, 29, 31, 33, 35, 36 and 37). These examples give the skilled
person at least some idea of suitable structures which fulfill
the functional requirement of claim 1 of being
phosphorescent. (emphasis added)
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Sufficiency
Sufficiency: T 437/14 (*Decision from 17 October 2016)
Point 4.5 of the “Reasons for the Decision”:
Secondly, the patent even provides specific selection rules
on how to identify ligands L and X within the structural
definition of claim 1 that lead to phosphorescent
compounds…..(emphasis added)
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Sufficiency
Sufficiency: T 437/14 (*Decision from 17 October 2016)
Point 4.6 of the “Reasons for the Decision”:
Consequently, no undue burden is needed to select those
complexes falling under the structural definition given in claim
1 that are phosphorescent.
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Sufficiency
Sufficiency (2015 – 2016)
Open discussion and comments: Dr. Kinkeldey
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Admissibility of Late Filed Facts, Evidence, and Arguments
Admissibility of Late Filed Facts, Evidence, and
Arguments:
• prima facie relevance
• Rules of Proceedure for the Boards of Appeal (RPBA)
• Timing
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prima facie relevance
prima facie relevance?
G1/84 - point 3 of the “Reasons for the Decision”: Starting at the correct point, therefore, it becomes immediately apparent that the elaborate provisions in the EPC for substantive examination and opposition are designed to ensure that only valid European patents should be granted and maintained in force, so far as it lies within the power of the European Patent Office to achieve this….. (emphasis added)
(*G1/84: Decision from 24 July 1985.)
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prima facie relevance
prima facie relevance (GL E-V, 2)
(GL E-V, 2): If examination of late-filed grounds for opposition,
late-filed facts or late-filed evidence reveals without any
further investigation (i.e. prima facie) that they are relevant,
i.e. that the basis of the envisaged decision would be changed,
then the competent department has to take such grounds, facts
or evidence into consideration no matter what stage the
procedure has reached and whatever the reasons for belated
submission. In that case, the principle of examination by the
EPO of its own motion under Art. 114(1) takes precedence over
the possibility of disregarding facts or evidence under Art. 114(2)
(see T 156/84). Note, however, the limits on the obligation to
undertake further examinations as set out in E-V, 1.2. (emphasis
added)
(GL E-V, 2 : Current Guidelines from November 2016)
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prima facie relevance
prima facie relevance (GL E-V, 1.2)
(GL E-V, 1.2): However, the obligation to undertake such
examination should be kept within limits in the interests of
procedural expediency. For example, in opposition
proceedings, an offer to prove that an alleged public prior use
took place should not be taken up if the opponent making such
an allegation has ceased to participate in the proceedings and
the necessary evidence cannot be easily obtained at a
reasonable cost. (emphasis added)
(GL E-V, 1.2 : Current Guidelines from November 2016)
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prima facie relevance
prima facie relevance (G 3/14)
G 3/14 – paragraph [0080] of the “Reasons for Decision”: However, the Enlarged Board cannot go as far as the submission (point VI(b), above), citing G 1/84 (OJ EPO 1985, 299), at point 3 of the Reasons, that "the elaborate provisions in the EPC for substantive examination and opposition are designed to ensure that only valid European patents should be granted and maintained in force" by the EPO, not least because the Enlarged Board added "... sofar as it lies within the power of the European Patent Office to achieve this. (emphasis added)
(*G3/14: Decision from 24 March 2015.)
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prima facie relevance
prima facie relevance (G 3/14)
G 3/14 – paragraph [0080] of the “Reasons for Decision”:
….Opposition proceedings are not designed as a procedure
for generally amending (or revoking) patents which contain
any kind of defect. This is amply demonstrated by the fact
that failure to satisfy the requirements of Article 84 EPC is not
a ground for opposition. As has been said many times (e.g., G
1/84, point 9 of the Reasons), opposition proceedings are not
designed to be a continuation of examination proceedings.
(emphasis added)
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prima facie relevance
prima facie relevance – Second Instance (T 2542/10) (*Decision from 09 October 2012)
Section 2.2.2 “Reasons of the Decision”: From the above, it
follows that a document filed late in opposition-appeal
proceedings may be admitted by the board, in particular in a
situation where it is prima facie prejudicial to the
maintenance of the patent (see also T 1002/92, OJ EPO 1995,
605, headnote; T 212/91 of 16 May 1995, point 2; and T
931/06 of 21 November 2008, point 3). (emphasis added)
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prima facie relevance
prima facie relevance – Second Instance (T 2542/10) (*Decision from 09 October 2012)
Section 2.2.2 “Reasons of the Decision”: From the above =
According to decision G 1/84 of the Enlarged Board of Appeal (OJ
EPO 1985, 299, point 3, first sentence)”... the elaborate provisions
in the EPC for substantive examination and opposition are designed
to ensure that only valid European patents should be granted and
maintained in force, so far as it lies within the power of the
European Patent Office to achieve this.” This is confirmed by
decision T 156/84 (OJ EPO 1988, 372), where the following is stated
in the headnote: "The principle of examination by the EPO of its own
motion (Article 114(1) EPC) takes precedence over the possibility of
disregarding facts or evidence not submitted in due time. This
follows from the EPO’s duty vis-a-vis the public not to grant or
maintain patents which it is convinced are not legally valid.“
(emphasis added)
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prima facie relevance
prima facie relevance – Second Instance
(T2542/10) (*Decision from 09 October 2012)
Section 2.2.3 “Reasons of the Decision”:
In the present case, example XV of document D16 is clearly
novelty-destroying to the subject-matter of the main request
(for details, see point 4 below). In view of its relevance, D16
therefore has to be admitted into the proceedings. (emphasis
added)
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prima facie relevance
prima facie relevance – Second Instance (T 724/08) (*Decision from 09 October 2012)
Section 2.2.3 “Reasons of the Decision” (summarized from
the German):
The board has the discretion not to admit documents which are
cited as novelty-destroying for the first time in appeal… The
board can, but does not need to consider any prima facie
relevance when exercising its discretion to admit or not to
admit these documents. (emphasis added)
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prima facie relevance
prima facie relevance – Second Instance (T 1119/05) (*Decision from 08 January 2008)
T 1119/05 - Section 3.2 of “Reasons for the Decision”:
A board of appeal should only overrule the way in which a
department of first instance has exercised its discretion if the
board concludes it has done so according to the wrong
principles, or without taking into account the right
principles, or in an unreasonable way (see Case Law of the
Boards of Appeal of the European Patent Office, 5th edition
2006, VII.D,6.6).
The question therefore arises whether the Opposition Division
exercised its discretion properly according to the above stated
criteria. (emphasis added)
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prima facie relevance
prima facie relevance – Second Instance (T 0971/11) (*Decision from 04 March 2016)
T 0971/11 – Section 1.1 of “Reasons for the Decision”:
Under Article 114(2) EPC 1973 it is at the opposition
division’s discretion not to admit late-filed documents. It is
well established case law that these are to be examined as to
their relevance by the department of first instance; late-filed
facts and evidence and supporting arguments should then be
exceptionally admitted into the proceedings if, prima facie,
there are reasons to suspect that such late-filed documents
prejudice the maintenance of the European patent in suit.
(emphasis added)
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prima facie relevance
prima facie relevance – Second Instance (T 0971/11) (*Decision from 04 March 2016)
T 0971/11 – Section 1.1 of “Reasons for the Decision”:
… A board of appeal should only overrule the way in which a
department of first instance has exercised its discretion when
deciding on a particular case if it concludes that it has done so
according to the wrong principles, or without taking into
account the right principles, or in an unreasonable way.
This rule also applies with respect to opposition division
decisions on the admission of late-filed submissions.
(emphasis added)
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prima facie relevance
prima facie relevance – Second Instance (T 0971/11) (*Decision from 04 March 2016)
T 0971/11 – Section 1.1 of “Reasons for the Decision”:
… It is generally not the function of a board of appeal to
review all the facts and circumstances of the case as if it were
in the place of the department of first instance, in order to
decide whether or not it would have exercised such discretion
in the same way (cf. cases cited in Case Law of the Boards of
Appeal of the European Patent Office, 7th Edition, 2013,
IV.C.1.3.3). (emphasis added)
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prima facie relevance
prima facie relevance – Second Instance (T 0971/11) (*Decision from 04 March 2016)
T 0971/11 – Section 1.3 of “Reasons for the Decision”:
In the judgement of the present board, a document which would have been admitted into appeal proceedings if it had been filed for the first time at the outset of those proceedings should not, however, be held inadmissible for the sole reason that it was already filed before the department of first instance (and not admitted). ... (emphasis added)
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prima facie relevance
prima facie relevance (2015 – 2016)
Open discussion and comments: Dr. Kinkeldey
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Late Filing – Legal Provisions
Article 114(1) EPC
In proceedings before it, the European Patent Office shall
examine the facts of its own motion; it shall not be restricted in
this examination to the facts, evidence and arguments
provided by the parties and the relief sought.
Article 114(2) EPC
The European Patent Office may disregard facts or evidence
which are not submitted in due time by the parties concerned
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Late Filing – Legal Provisions
Article 12(2) RPBA
The statement of grounds of appeal (appellant) and the reply
(respondent) shall contain a party's complete case.
Article 12(4) RPBA
Board can hold inadmissible facts and evidence which
could have been presented or
were not admitted in the first instance proceedings
or which do not meet the requirements of Article 12(2) of
being complete
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Late Filing – Legal Provisions
Article 13(1) RPBA
Board has discretion not to admit any amendment to a party's
case after it has filed its grounds of appeal or reply. The
discretion shall be exercised in view of inter alia
the complexity of the new subject matter submitted,
the current state of the proceedings, and
the need for procedural economy
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Late Filing – Legal Provisions
Article 13(3) RPBA
Amendments after oral proceedings have been arranged shall
not be admitted if they raise issues which the Board or the
other party or parties cannot reasonably be expected to deal
with without adjournment of the oral proceedings
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Late Filing – Legal Provisions
Decision of the AC to amend the Rules of Procedure
CA/133/02
The intended overall effect of the amendments in Articles 12 and 13 is
to prevent "ping pong" submissions and "salami" tactics in
written proceedings and to provide the Board (and the rapporteur in
particular) with an appeal file containing one comprehensive
submission from each party.
Thus, by way of Article 12, the moment in time when a party’s case
is considered to be complete ... is fixed objectively by the rules
and no longer subject to the procedural strategy of the
parties.
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Late Filing – Legal Provisions
Decision of the AC to amend the Rules of Procedure
CA/133/02
The criteria of Article 13 for the admission of new subject matter take
account of the right of the other parties to a fair procedure and is
aimed at the more pragmatic and reliable conduct of proceedings
and a reduction in the number of adjournments and remittals...
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Late Filing – Legal Provisions
Statement of
grounds of appeal
Reply Summons Oral
Proceedings
Art. 12(4) Art. 13(1) Art. 13(3)
Art. 12(2)
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Late Filing – Legal Provisions
Late Filing – Legal Provisions (2015 – 2016)
Open discussion and comments: Dr. Kinkeldey
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Late Filing
Late Filing: T 736/99 (*Decision from 20 June 2002)
Point 2.3.2 of “The Reasons for the Decision”:
…Generally the boards have applied the criteria of relevance
and procedural complication to help resolve the conflict
between these incommensurables, with the hurdle of
relevance set higher the later the submission. In some
recent decisions the criterion of complexity of the legal and
technical issues raised by the late submission has been
relied on as an additional or alternative criterion…
(emphasis added)
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Late Filing
Late Filing: T 2471/13 (*Decision from 13 March 2016)
Point 1.1 of “The Reasons for the Decision”:
… D3’ was cited for the first time in the appellant’s statement
of grounds, and a hardcopy of D3’ was filed together with said
statement. The admittance of D3’ into the proceedings is thus
subject to the board’s discretion under Article 114(2) EPC and
Article 12(4) RPBA. (emphasis added)
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Late Filing
Late Filing: T 2471/13 (*Decision from 13 March 2016)
Point 1.1 of “The Reasons for the Decision”:
… The appellant argued that D3 had been cited erroneously in
the statement setting out the grounds for opposition. It had
been intended to cite D3 ’, and reference had been made to the
relevant passages of the "correct" document D3`. (emphasis
added)
67 Life Science IP Seminar 2017 Life Science IP Seminar 2017
Late Filing
Late Filing: T 2471/13 (*Decision from 13 March 2016)
Point 1.8 of “The Reasons for the Decision”:
… Taking into account all the above circumstances, the board
decided not to admit document D3’ into the proceedings,
irrespective of its potential relevance (Article 114(2) EPC and
Article 12(4) RPBA). (emphasis added)
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Late Filing
Late Filing: T 0450/13 (*Decision from 24 March 2015)
Point 6.2.1 of “The Reasons for the Decision”:
… Unlike the attack on the basis of D2, D28 was cited against
novelty in the statement of grounds of appeal. The filing of this
document thus meets the requirement of Article 12(2) RPBA.
However, such a document may be not admitted if it could
have been, but was not, filed during the opposition
proceedings (Article 12(4) RPBA). (emphasis added)
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Late Filing
Late Filing: T 241/10 (*Decision from 07 May 2014)
Catchword:
… The board has no power under Article 12(4) RPBA to hold
a document filed with the statement of grounds of appeal
inadmissible if the filing of that document was a legitimate
reaction to the submission of amended claims by the patent
proprietor shortly before the first-instance oral proceedings
and the opponent could not have been reasonably expected
to present that document in the proceedings before the
opposition division (see points 2 to 7). (emphasis added)
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Late Filing
Late Filing: T 2393/13 (*Decision from 05 February 2016)
Point 5 of “The Reasons for the Decision” (summarized
from the German):
Article 12(4) RPBA does not only require that facts and evidence be submitted at the appropriate point in time but also that they meet the requirements of Article 12(2) RPBA of being complete. In this case, the board therefore did not admit a public prior use since it was not sufficiently substantiated.
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Late Filing
Late Filing: T 2054/11 (*Decision from 09 October 2015)
Point 2 of “The Reasons for the Decision” (summarized
from the German):
If a case is amended in appeal by filing new document after the
summons to oral proceedings and in particular if filed during
the oral proceedings, the relevance of the document does
not play a role when deciding whether it can be admitted.
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Late Filing: T 1621/09 (*Decision from 22 September 2011)
Catchword:
(a) 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 (Point 37(a) of the Reasons).
(emphasis added)
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Late Filing
Late Filing: T 55/11 (*Decision from 15 February 2016)
Point 2.3 of “The Reasons for the Decision”:
The present board considers that in deciding whether a new
argument has the effect of amending a party’s case within the
meaning of Article 13(1) RPBA it must be established on a
case-by-case basis whether the new argument is a departure
from, or just a development of, the original arguments filed
with the grounds of appeal or the reply thereto. This approach
is in line with the analysis made in T 1621/09, see in particular
point 9 of the Reasons. (emphasis added)
74 Life Science IP Seminar 2017 Life Science IP Seminar 2017
Late Filing
Late Filing: T 55/11 (*Decision from 15 February 2016)
Point 9 of “The Reasons for the Decision”:
Since the arguments relied on thus constitute part of a party's
case, it appears to the Board that new arguments, even when
based on facts and evidence already in the proceedings, can
have the effect of altering a party's case: the facts and
evidence relied on can be assembled in different ways
using different arguments. On the other hand, there will clearly
be many situations where a new argument does not change a
party’s case. (emphasis added)
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Late Filing
Late Filing: T 55/11 (*Decision from 15 February 2016)
Point 9 of “The Reasons for the Decision”:
… the two ways of presenting the novelty attack set out in
Point VIII(a), above, are different in substance, and, in the
Board’s view, are different cases. Such a conclusion is very
case specific (i.e., it depends very much on the specific
circumstances of the appeal) but the Board reaches it taking
into account in particular the fact that the two attacks are
inconsistent, and the second attack is a departure from and
not just a development of the first. (emphasis added)
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Late Filing
Late Filing (2015 – 2016)
Open discussion and comments: Dr. Kinkeldey