New RPCR Project

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A conference is being held in Munich today to gather the opinions of users on the 2nd version of the draft new Rules of Procedure for the Boards of Appeal (RPCR) .

If we can notice some changes compared to the first version , the spirit remains unchanged.

This new project could be approved by the Board in March or June 2019, and come into force six months later.
In terms of transitional provisions , the new RPCR will apply to all pending appeals on the effective date. Only new sections 12 (4) to 12 (6) will not apply if the appeal submissions have already been filed, and the new section 13 (2) will not apply if oral proceedings have already been called.

In terms of records management :
– each Chamber will publish in advance a list of cases for which the oral proceedings should take place the following year (Article 1 (2))
– the 4-month time limit for replying to the appeal brief can not be extended (Article 12 (7))
– convocations to oral proceedings will be sent at least 4 months before, as well as a notification drawing attention to the important points to be discussed (possibly with a provisional opinion) (Article 15 (1))
– Decisions may be abridged with the express consent of the parties (Article 15 (7)) and should be sent within 3 months of the oral proceedings (Article 15 (9)))

Compared to the current RPCR, the changes that will have the greatest impact on the parties and their strategies, concern Articles 12 and 13, and their ” convergent approach ” at 3 levels.

As regards the first level (the start of the appeal, therefore the appeal and response), the parties must in principle limit their pleas to the motions, facts, objections, arguments and evidence on which the contested decision is based (Article 12 (2)). The primary purpose of the appeal is to reconsider the decision and not to re-examine it.
Any other means will be considered an amendment, to be justified, and will only be admitted at the discretion of the House (Article 12 (4)). It should be noted that a means validly raised and maintained at first instance will not be considered as an amendment even if it was not mentioned in the decision (for example, subsidiary requests filed but not discussed because the first instance right to a higher-ranked application or reasons not discussed because other reasons have previously flourished).
Inadequately reasoned grounds in the pleading or answer may also not be admitted (Article 12 (5)).
Article 12 (6) finally lists what will not normally be admitted, unless justified by a change of circumstances: the means not admitted at first instance, except in case of error of the latter when exercising its discretion, and the means that should have been submitted at trial or not maintained.

The principles of Articles 12 (4) to 12 (6) will also apply to the second level (modification of the pleas in relation to the commencement of the appeal – Article 13 (1)). At this level, late amendments must be justified and will only be admitted at the discretion of the Chamber (which will probably be more severe than at the first level). In particular, the Chamber will consider whether the amendments are prejudicial to the procedural economy and whether they at first sight meet objections without creating new ones.

At the third level (amendment after convocation to oral proceedings – Article 13 (2)), changes will only be allowed in exceptional circumstances to be convincingly justified.

The possibility to form an independent appeal must be included in the device

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The plaintiff paid 5 additional search fees and then asked for their refund.
In an interlocutory decision , the Examining Division partially allowed this application, ordering the reimbursement of 4 search fees. This case concerns the appeal against that interim decision.

The appeal was first sent to the Legal Board of Appeal, with case number J24 / 12, and then transmitted to Chamber 3.4.01, the Grand Chamber having meanwhile decided ( G / 11 ) that these questions fell within the competence of the Technical Chambers.

The Chamber quashes the decision on procedural grounds. The reasons for the interlocutory decision are based on a comparison with D3 on which the plaintiff did not have the opportunity to comment. The Chamber notes that since 2014 the Guidelines ( C-III 3.3 ) explicitly provide that before any interim decision the applicant must be informed of the preliminary opinion of the examining division in a notification under Article 94 (3) EPC.

The Chamber therefore remits the case to the Examining Division and orders the reimbursement of the appeal fee.
It takes this opportunity to point out that the operative part of the future decision should clearly indicate to what extent the examining division is entitled to the plaintiff’s specific requests or not, and whether an independent remedy is provided for.

On this last point, the Chamber states that the admission of an independent appeal against an interlocutory decision ( Article 106 (2) EPC ) is a decision of the Examining Division, which establishes the possibility of filing an appeal, and which must therefore be included in the operative part of the decision.

It should be noted that the Examining Division rejected the request for lack of unity and clarity, and that the same Board in T2482 / 12 confirmed the lack of hindsight on the basis of D3.


T1314 / 14: late modification of the description

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According to the claim the nonwoven web was transferred from a delivery zone Zd to a recovery zone Zr.
The crucial point of the decision was whether the presence of intermediate elements between these two zones was excluded or not.

For the Chamber, while it may be accepted that the wording of the claim precludes such intermediate elements at first glance, the patent discloses in Figure 9 a buffer system, which according to the Chamber is not part of the issuing area.
The board concludes that the wording of the claim must be understood not to exclude the presence of intermediate elements between zones Zd and Zr.
Document D1 ‘is then destructive of novelty.

During the oral proceedings, the Contractor submitted a subsidiary request, with the same set of claims, but deleting from the description figures 7 to 9 and the associated description. In this way, the Chamber’s interpretation of the wording of the claim was no longer valid.

The Chamber does not allow this late application in the proceedings. The principle of procedural economy requires that the amendments be receivable prima facie in that they seek to resolve the critical points raised against the previous applications without raising new ones.

The Board finds that, prima facie, the novelty objection can not be considered to be overcome by such modifications that leave the wording of the claim unchanged. According to the case law of the Boards of Appeal, the interpretation of a claim is not normally considered to be more limited when an embodiment is deleted from the description.

In any event, to discuss for the first time at this stage the potential implications on the novelty issue of an elimination of certain embodiments covered by the claim as granted, would be contrary to the principles of procedural economy as well. equal opportunity between the two parties, despite the severe consequence for the respondent of the loss of the patent.

T104 / 15: No referral to the Examining Division

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This case concerns an appeal on examination.
In a notification under Rule 100 (2) EPC, the Chamber had introduced a new D8 document and raised objections under Articles 54, 56 and 123 (2) EPC.

In the main motion, the Applicant requested the first-instance referral to continue the review on the basis of the new D8 document. The Applicant argued that citation of a document for the first time at such a late stage meant that the review of the application was to be limited to a single exchange of letters during which the possibilities for amendment and filing of new applications were limited. A footnote was consistent with the principles of G9 / 91 .

On the contrary, the Chamber decides not to remit the case for several reasons:

  • D8, which emanates from the Applicant, was introduced in response to new arguments submitted with the appeal brief,
  • G9 / 91 applies to inter partes proceedings . According to G10 / 93 , which applies to ex parte proceedings, the Boards of Appeal need not limit themselves to examining the grounds of the impugned decision, nor to the facts and evidence upon which that decision is based;
  • finally, the Chamber, which includes technical members, is able to correctly judge the technical content of the application and the new document cited, and to judge the merits of the case without referral at first instance.

Inventive Activity

T404 / 14: general knowledge

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Once it is not customary, the Chamber relies solely on the general knowledge of the person skilled in the art to conclude that there is no inventive step.
The Chamber begins by noting that the steps described in the application , in which a glass substrate is bonded to an oxidizable substrate by heating and applying an electric field, correspond to an anodic soldering process, although the application does not mention this term.

The Examining Division was part of an Article D7, which the Chamber finds to be less than optimal because it does not seek to link two substrates.

The Board prefers to assume that anodic solder is a well-known method for bonding monocrystalline silicon substrates to glass substrates, which emerges from 8 scientific papers . In addition, these same articles show that the glasses commonly used for this purpose are borosilicates or aluminosilicates. It is this combination of known features that the Board considers to be the starting point representing the closest state of the art.

D7 further shows that a number of features of the claim are implicitly and unavoidably obtained in an anodic welding process. To the plaintiff, who argued that D7 did not lead the skilled person to the invention, the Chamber retorts that D7 describes the physicochemical processes that occur during the anodic bonding and that will necessarily lead to the presence of the characteristics in question, that the skilled person has knowledge of D7 or not.

The Chamber ultimately concludes that the only distinguishing features are the thicknesses of the substrates (10 to 500 nm for the semiconductor and 0.1 to 10 mm for the glass), which can not involve an inventive step because these wide ranges are those normally used in microelectronics and do not provide any particular effect.


J12 / 16: request transferred successively to two different persons

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Approximately 3 months after the sending of the notification under Rule 71 (3) EPC, the EPO received successively two applications for the transfer of the application:
– 1.6.2015: transfer from P to A , based on a contract of 5.6.2014 ,
– 10.6.2015: transfer from P to G , based on a contract of 9.6.2015 .
(Note that the inventor is both P and G leader)

Since the first request for registration was defective (failure to pay the prescribed fee), and corrected only on 22.6.2015, the second transfer was entered in the register (confirmed by the decision of the Legal Division of 15.3.2016 ) and the patent was issued in the name of G (decision of the Examining Division of 17.3.2016, with publication of the mention of grant dated 13.4.2016).

A brought the present action against the decision of the Legal Division.

The Legal Chamber decides that pursuant to Rule 22 (3) EPC the second transfer took effect with respect to the EPO on 10.6.2015, hence the entry in the Register. The legal division has therefore correctly decided.
The requirements of Rule 22 EPC are of a purely formal nature. The question of who really owns the patent between A and G does not fall within the competence of the EPO, but of the national courts as part of an action in claim.

The Legal Chamber notes in any event that the question of the recording of the transfer is no longer a matter for the EPO under Rule 85 EPC because the opposition period has expired and no opposition has been filed. was formed. The appeal has therefore become devoid of purpose.
The Chamber is of the opinion that, in order to avoid this situation, the Examining Division should have waited, before issuing the patent, for the 2-month period for appealing the decision of the Legal Division to have expired.

It proposes the following summary (personal translation): during the period within which to lodge an appeal against a decision simultaneously rejecting a request for registration and a stay of proceedings, and taking into account the suspensive effect of the appeal, no measure likely to hinder the course of a subsequent appeal should not be taken at the register level.

Previous Use

T1409 / 16: interpretation of “either … either” and extrinsic characteristic

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The decision is interesting in two respects.

The claimed lye contained a substituted cellulose having a degree of substitution DS and a degree of DB block presence with either ( either ) DS + DB> 1 or ( gold ) DB + 2DS-DS²> 1.20.

The Opponent argued that the two conditions were exclusive because of the use of “either … or”. If the Holder had wanted an inclusive “or” she would have used the expression “and / or”, which she did in claim 9.

The House does not agree. It notes that the term “either … or” may be an exclusive or inclusive disjunction, so that the claim is unclear and needs to be interpreted taking into account the entire patent. In this case, some examples indicated as being according to the invention have both properties. In addition, the mathematical analysis of the two inequalities reveals that they are not mutually exclusive. It is only for a small couple of (DS, DB) that only one of the two inequalities is respected.

With respect to novelty, the Opponent cited documents describing detergents containing carboxymethylcellulose ” Finnfix BDA “. Now, by splitting this cellulose, the Opponent has obtained a fraction F1 respecting both inequalities. Since the claim is open, all compositions of the prior art contained this F1 fraction and were therefore in accordance with the claim.

The House is not convinced either. Polymeric components contain molecules differing in chain length. The fact of intellectually separating these components into several fractions and attributing to one of these fractions (also composed of molecules of different chain lengths) a physical property distinguishing this fraction from the others is an artificial and a posteriori approach.

The DB and DS values ​​obtained by analyzing the product as a whole do not respect the inequalities. These are the values ​​that are made available to the public through product analysis.

This conclusion is consistent with G1 / 92 that a commercial product does not disclose ” extrinsic characteristics , which only occur when there is interaction between the product and specifically selected external conditions , such as reagents or products of the same kind, in order to obtain a particular effect or result or to discover results or potential means, go beyond the product itself, insofar as they depend on deliberate choices.

The splitting performed is a kind of reverse engineering revealing such an extrinsic feature.

no decision, no revision

R4 / 18: no decision, no revision

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The Claimant had drafted a request for review and a ” formal complaint ” (63 pages!), Filed by a representative.

During the oral proceedings.before the Board of Appeal, in which the Claimant’s inventor took part, the various applications were considered contrary to Article 123 (2) EPC and after the Chamber decided to not to admit the auxiliary request 23 in the proceedings, the representative asked whether he could still withdraw the appeal. The Chamber having answered in the affirmative because the decision had not yet been pronounced, the appeal was withdrawn.

According to the Claimant, the attorney represented the Chamber rather than his client, which indicated a collusion between her agent and the Chamber. The attorney had repeatedly prevented the inventor from expressing herself, and the Chamber had encouraged her in this way, laughing as soon as the agent tried to silence her. The withdrawal of the appeal was not valid because his representative did not represent the Claimant, and the Chamber had urged the withdrawal of the appeal so as to impose its conclusions, preventing the Claimant from defending himself.

As a preliminary matter, the Grand Chamber notes that the Claimant has not proved that the mandate of his representative had ended before the oral proceedings; on the contrary, it was only 3 months after the Claimant changed the agent. The Chamber also did not urge the withdrawal of the appeal, it merely answered the question put by the representative. The Claimant has finally not proved the slightest collusion between the Chamber and its representative; it only criticized the professionalism of the latter.

Last but not least, Article 112a (1) EPC provides that an application for review may only be lodged against a decision, and the minutes of the oral proceedings are not a decision.

The fact that a document constitutes a decision or not depends on its content rather than its form, and the content must be understood in the procedural context, that of an appeal procedure terminated by the withdrawal of the appeal by the sole applicant.
Another characteristic of a decision is that it implies a reasoned choice between two legally valid alternatives ( T934 / 91 ), which is not the case of a report, the purpose of which is to reflect an oral procedure ( T231 / 99 ).

Finally, the use of the term “conclusion” rather than “preliminary opinion” does not make a record of a decision as to the points on which the conclusion was made. The practice of Chambers is to express opinions or conclusions on substantive issues during the oral proceedings. On procedural matters, such as the admissibility of a document or an application, the Chamber necessarily makes “decisions” (which it has done here in respect of auxiliary request 23). But this is the only decision made, as the appeal proceedings were terminated by the withdrawal of the appeal.

The decision to review is inadmissible.

Admissibility of new attacks

T392 / 16: admissibility of new attacks

We have seen Article 12 (4) RPCR very often applied to new facts or new requests. It is here applied to new lines of attack, assimilated to new facts .

Like the Opposition Division, the Chamber finds that the object claimed is new under D1.

During the first instance, the Opponent had made inventive step attacks based on the combinations D3 + D4, D3 + D5, D3 + D9, D10 + D6, D10 + D3 and D10 + D2.

With its appeal brief, the Opponent made objections based on the following combinations: D1 + D4, D1 + D2, D1 + D4 + D2 and D4 + D6.

The Chamber notes that these objections are based on documents submitted with the statement of opposition. However, the specific combinations were never the subject of the opposition proceedings. These objections thus represent new facts alleged by the Opponent and presented for the first time as an appeal.

However, Article 12 (4) RPCR gives the Chambers the discretionary power not to admit new facts, motions and evidence that could have been produced at first instance.

For the Opponent, the new attacks based on D1 were a reaction to the position taken by the Opposition Division during the oral proceedings, according to which D1 did not disclose the three layers of claimed treads. The Board is not convinced that the presence of this feature was challenged by the Registrant in its response to the Opposition so that the Opponent should have foreseen that the Opposition Division could also have this interpretation. The Opponent should therefore have considered the possibility, in a fallback position, of taking D1 or D4 as the closest alternative state of the art. The Chamber draws a parallel here with a Holder who provides alternative requests as possible fallback positions in case his arguments are not followed.

The Chamber also recalls that the purpose of an appeal is to contest the validity of the impugned decision, not to continue the opposition proceedings, and decides not to admit the new lines of attack in the proceedings.

“Product-by-process” chain

T642 / 14: “product-by-process” chain

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The subject of the patent was a process for the manufacture of epichlorohydrin comprising a step of dehydrochlorinating a dichloropropanol produced from glycerol, itself obtained from renewable raw materials during the manufacture of biodiesel.

The Board notes that the steps for the preparation of dichloropropanol are not technical features of the claimed process. The latter is not a multi-step process comprising the steps of preparing glycerol, then dichloropropanol, and finally epichlorohydrin. The steps for preparing glycerol and dichloropropanol only serve to define the starting material of the claimed process (dichloropropanol) and can only have an impact on novelty to the extent that they inevitably confer a particular structure or property on the product. starting material used.

In addition, the process for obtaining the starting material is not limited in terms of reaction conditions, which can therefore include any separation and purification steps. For the Board, the starting material is defined only by the presence of dichloropropanol molecules and does not differ from a generic dichloropropanol.

In order to establish the novelty with respect to D23 which described the manufacture of epichlorohydrin by dehydrochlorination of a dichloropropanol produced from glycerol, the Holder had submitted a D53 test report comparing the use of glycerols having different origins. The epichlorohydrins obtained had different colors.
This does not convince the Board, because in none of the examples did the dicholoropropanol obtained have been isolated and characterized. The different colors may simply indicate the presence of different impurities depending on the source of glycerol, this does not prove that the dichloropropanol is in itself different.

The Board concludes that the claimed process is not new in relation to D23.