The Non-Commutative Algebra of Inventive Step - T 1649/10

The decision T 1649/10 of the Technical Boards of Appeal raises the bar for the admissibility of an appeal under Articles 106 to 108 EPC and Rule 99 EPC. Rule 99 EPC relates to the "Content of the notice of appeal and the statement of grounds".

Rule 99(2) EPC stipulates: "In the statement of grounds of appeal the appellant shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based".

In the case at issue, the patent had been maintained in amended form (with added features from the specification) by the opposition division. Claim 1 as granted had been judged to lack inventive step starting from a document D10 as the closest prior art in combination with a document D4. In the grounds of appeal, the appellant argued that claim 1 as granted was indeed non-obvious starting from D4 as the closest prior art in combination with D10.  No reason why D4 would be a more appropriate starting point than D10 was given.

D10 combined with D4 or D4 combined with D10 - does it make a difference?

According to the Board, it does. The appeal was rejected as inadmissible because the reasons of the impugned decision (obviousness starting from D10) were not properly addressed. The claim as maintained by the opposition division was considered to lack clarity and the patentee having lost its status as appellant did not find a way to overcome this problem without colliding with the prohibition of reformatio in peius. The patent was completely revoked.

This following the decision T 2077/11 , this decision highlights the importance to specifically address the reasons given in the impugned decision and to not only re-iterate one's own view of the case. While I personally think that this decision overstresses  the requirements of Rule 99(2) EPC, it should serve as a warning when drafting grounds of appeal.

Purposive use of Information Modelling may be Patentable

The decision T 0049/99 relates to a patent application relating to a method for modelling a physical system in a computer. Inputs are various data describing the physical system and the output is an object-oriented model thereof.

The question arose under which conditions such kind of information modelling may contribute to the technical character of the invention and consequently be accounted for when assessing the inventive step.

Here is the catchword of the decision:

Information modelling is an intellectual activity and should be treated like any other human activity in a non-technical field, which is, as such, not an invention for the purposes of Article 52(1) EPC. Only the purposive use of information modelling in the context of a solution to a technical problem may contribute to the technical character of an invention.

While the first sentence is not very surprising, the second sentence might be a pointer to what could have been patentable if properly claimed.

The applicants/appellants had apparently argued that the link to the tangible application of power systems lends some technical character to the features. The BoA responds as follows:

The claimed invention, however, is not restricted to power systems; as expressly indicated in the description the invention may be applied to various types of systems, "large, complex systems" including manufacturing plants and other physical systems (see description, page 30, lines 10 ff.). Claim 1 uses the generic expression "physical system", which is actually a term including any real world system, even business and administrative organisations. 

In the light of the broad meaning of the expression "physical system", information modelling in terms of the first part of claim 1 has to be construed as an abstract non-technical activity using abstract constructs like objects, types, attributes, and relationships.

Eventually, a more specific definition of the purposive use would have helped to classify the feature as a technical one.

Mere Disagreement with Reasons of a Decison is not a Sufficent Ground of Appeal

The appeal in the case T 0972/13 has been held inadmissible because the grounds were considered insufficiently substantiated.

The appellant had filed grounds of appeal merely stating "We disagree with the OD [Opposition Division] in that ..... " followed by a repetition of the reasons of the decision given by the Opposition Division. No whatsoever reasons for the disagreement were given. The board concluded that the statement of the grounds of appeal did not comply with Rule 99(2) EPC because no reasons (other than plain disagreement) why the decision should be set aside were given.

After the decision reported here, the decision T 0972/13 puts further emphasizes the importance of discussing the reasons given the decision impugned in detail and not to merely re-iterate one's own arguments from the first instance or  state one's dissatisfaction with the reasons.

A further interesting point in this decision is that an order on apportionment of costs was issued, which is a fairly rare event. The appellant had indicated that it would not be represented in the oral proceedings without withdrawing its request to hold oral proceedings. This left open whether the appellant would attend to the oral proceedings without being represented by a representative or whether the appellant would not attend at all such that the defendants had to prepare and attend to the oral proceedings as a matter of due diligence. The board found that this justified an order that the appellant had to bear the costs for the defendant's preparation and attendance to the oral proceedinsg for reasons of equity (Art. 104(1) EPC).

No new substance, no admissibility - T2077/11

The decision T2077/11  of the EPO's technical board of appeal is a warning for all those who appreciate the art of copy & paste in appeal proceedings.

The appellant had filed a voluminous writ with grounds of appeal against a decision in opposition proceedings. Further scrutiny revealed that most of what was said therein was a copy of the grounds of opposition. Some additional phrases like "contrary to the contested decision" were sprinkled throughout the text but no new substantive arguments were added and none of the reasons given by the opposition division why the arguments of the appellant/opponent was wrong was discussed.

Disregarding what was a copy of the arguments filed in the first instance, the board of appeal summarizes the grounds of appeal as follows:

In fact, the appellant's statement of grounds can be summarised as follows: "We disagree with the contested decision. Contrary to the opinion of the opposition division the subject-matter of claim 1 according to the first auxiliary request fails to meet the requirements of sufficiency of disclosure (Article 100(b) EPC) and does not involve an inventive step (Article 56 EPC) for the reasons given in our grounds of opposition (reproduced here)."

The appellant submitted that the reproduced arguments did substantiate the grounds of opposition and were to be considered correct despite of the finding to the contrary in the first instance. However, the board notes that substantiation of the appeal requires discussing the reasons given for the decision of the first instance, not the grounds of opposition:

The appellant is of course correct in stating that there is nothing in the EPC or in the case-law that prohibits a party from repeating arguments presented during the previous proceedings. This approach however ignores the fundamental function of appeal proceedings, whether ex parte or inter partes, which is the judicial review of a contested decision. To this end it is foreseen that all decisions subject to appeal must set out the reasons supporting the conclusion reached having duly considered all the facts and arguments of the parties (Article 111(2) EPC). By the same token, the party contesting the reasoned decision is expected to consider and rebut at least one of those reasons in its effort to prove that the impugned decision is wrong and should be set aside. (emphasis added)

Beware of Digital Signature Folders

In the good old times, patent attorneys used to work by messing up the file, scribbling amendments into documents, dictate submissions to the offices and then letting their secretaries do the clean up and prepare the documents and present them neatly in a leather-would signature folder. The attorney would then put his glasses on, leaf through everything put his signature on the documents if everything was to his satisfaction and proceed to the tea break.

While the work distribution of messing up and cleaning up the file is basically unchanged, this blogger sometimes misses the leather-wound signature folder. The electronic equivalent is a PDF-viewer software included in the EPOline client and today's assistants have to prepare neat PDF documents for online-filing rather than writs on handmade paper. The PDF-viewer opens automatically when clicking on the "sign" button in the software and the electronic signature can be applied only after closing the viewer again and confirming that the signature shall be applied indeed. As compared with the leather-wound signature folder, the PDF-viewer is much less classy. Besides of the PDF-documents, it shows a lot of unreadable XML code and leafing through a submission with multiple attachments may be fairly bothersome.

It is therefore tempting to circumvent the clumsy PDF-viewer, have the documents presented on paper (in a leather-wound signature folder if you like) and to trust that your secretary makes sure that what is electronically signed is identical to what you have checked on paper.

This is what the attorney did in the case underlying the decision T 1101/14 available here. In this case, the secretary had been instructed to upload the document with the grounds of appeal but failed to do so. The attorney had applied the electronic signature without remarking that the grounds of appeal were missing. In the request for re-establishment of rights, it was argued that these were two isolated mistakes in an otherwise secure system.

The Technical Board of Appeal did not find the attorney's error excusable. The catchword reads:

A representative who mistakenly signs a statement of grounds of appeal having most of its pages missing must, in the absence of special circumstances which could justify the representative's mistake, be considered not to have taken all due care required by the circumstances.

What can the attorneys learn? We have to leaf through the electronic documents in the PDF-viewer before applying the electronic signature and are not entitled to blame the secretary if something is missing.
 

T1071/06 - Jilted in Munich

As a rule, each party bears its costs in EPO opposition proceedings and the subsequent appeal. However, the opposition division or the Board of Appeal may order a different apportionment for reasons of equity (Art. 104(1) EPC), which happens very rarely.

In the case T1071/06 the board had issued a preliminary opinion indicating that a document D0 would be considered as the closest prior art and the preliminary view was that the claims were inventive over D0. In response to this, frustrating punch, the opponent/appellant indicated one month after receipt of the summons that it would not attend to the oral proceedings.

The patentee/defendant attended to the oral proceedings alone and requested to impose the costs for the preparation and attendance to the oral proceedings to the appellant because the remaining issues could have been resolved in writing if only the opponent/appellant had given up earlier.

The board found that the appellant's behaviour was not abusive but that it is fair to grant each party the right to re-consider its case after receipt of the preliminary opinion. Besides, the oral proceedings would have been expedient in any case to resolve the remaining issues.

When a Delay turns into a Monster - T 0480/12

In the third game of the World Chess Championship in Sochi, challenger Viswanathan had put a  pawn on c7 quite early. Initially, the pawn did not look very dangerous but slownly tunred into a true monster pawn binding major parts of Carlsen's energy the longer the game lasted.

The crucial role of the seemingly harmless expression "data transmission delay" in the decision T0480/12 reminds me of this monster pawn of Viswanathan Anand. In the end, these words turned out to be as fatal as was the pawn for Magnus Carlsen:

Here is a quote from the grounds of opposition (emphasis added):

The feature "data transmission delay or latency" was introduced to replace "delay of data" during the examination procedure at which the latter had been regarded as unclear, because of leaving the reader in doubt as to the kind of processing referred to, e.g. processing delay, queuing delay or transmission delay (see communication of 4 November 2004, point 1.3). In the course of the opposition procedure the term "or latency" was deleted in the aim to overcome an objection as to added subject-matter. The respondent objected to the remaining feature "data transmission delay" for lack of clarity and argued that the term was no longer clear due to the deletion of "or latency".  

Moreover, the interpretation of the term "data transmission delay" on the basis of the description, see in particular paragraphs [0076], [0082] and [0083] was different from how this term was used by the skilled person. 

.......... 

While the appellant pointed out that the expression "data transmission delay" was clear in the light of the description of the patent by referring to paragraphs [0076], [0082] and [0083], the board agrees with the respondent that a claim has to be clear per se (see T 1129/97 dated 23 June 1998, point 2.1.2). However, when referring to "data transmission delay" in claims 1 and 7, in particular since the words "or latency" were removed from "data transmission delay", the skilled person would have an understanding of the expression different from the description. As is apparent from e.g. prior art document

A8: Rosado, Sosa C et al: Jitter compensation scheduling schemes for the support of real-time communications ,ICC 98, Conference Record, 1998 IEEE International Conference On Atlanta, GA, USA 7-11 June 1998, NEW YORK, NY, USA, IEEE, US, 7 June 1998, pages 885-890,

referred to by the respondent during oral proceedings, there are different types of delay like propagation delay, processing delay, queuing delay, transmission delay etc. (see e.g. section 2.1). Without further specification, the skilled person would interpret the expression "data transmission delay" in claim 1 to refer to this special type of delay rather than to the whole delay. The skilled  person would not understand claim 1 in a way that it is referred to more than the transmission of the data without further considering the description.

This means that:

• words used in the claims must have a clear meaning per se;
• the claim is unclear in cases where this meaning is modified when reading the claim in the context of the specification (which is always true to some degree...).

Looks like a blueprint for clarity attacks to virtually every amendment made after grant to this blogger!

EPO Case Law Conference Looms Large

Our good friend and reader Yonko Borisov (Conference Consultant/Academy, EPO) has just told us that registration is now open for the European Patent Office's Annual case law conference - Boards of appeal and key decisions 2013". 

Says Yonko, this conference provides a unique opportunity to meet numerous chairmen along with legally and technically qualified members of the Boards of Appeal. Participants will learn about the Boards' recent key decisions on late filings, among other enticing topics. 

For the first time ever, a mock trial will be held to convey the subtleties of a hearing.

To find out more, just click http://www.epo.org/boa-conference

When: 22 - 23 October 2013
Where: European Patent Office, Munich, Germany
Who: Primarily patent attorneys with a minimum of 4 years' experience

Guest speakers include the delightfully lucid Geertrui Van Overwalle from KU Leuven and Klaus Grabinski from the German Federal Court of Justice (Bundesgerichtshof).

The language of the conference is said to be English, though it is not clear how much this will help, given that some decisions of the EPO are said to be impossible to understood in any language known to mankind ...

Should we consider EPO and foreign rulings? The German position

An article for International Law Office, "Patent court required to consider EPO decisions" by Nora Keßler (Klinkert Zindel Partner, Germany), published online last month, comments on a decision of the German Bundesgerichtshof (the civil Supreme Court) that the Bundespatentgericht (the Federal Patent Court, right) is required to consider European Patent Office (EPO) decisions, as well as those of courts of other European Patent Convention member countries if they pertain to similar issues, including whether an invention is novel and inventive.

After explaining this decision in some detail the author comments:

"This decision is remarkable. The Supreme Court could have limited itself to ruling that, in the case before it, the Federal Patent Court should have considered the EPO decision. Instead, the Supreme Court established as a rule that courts must consider EPO decisions. Furthermore, the court also held that the same would apply to decisions issued by the courts of other European Patent Convention member states.

Unfortunately, the effect of the decision is somewhat mitigated by the Supreme Court's holding that, although the courts are required to consider EPO decisions and those rendered in other European Patent Convention member states, the deviation of a national court from such decisions does not constitute grounds to appeal to the Supreme Court. From the perspective of harmonization, such a ruling might have been desirable".

It's interesting to see how the shall-we-or shan't-we debate about referring to decisions of other jurisdictions and of the EPO is conducted in the major European patent-litigating nations. If any reader fancies doing some comparative research on this topic, leading ideally to an article for the Journal of Intellectual Property Law & Practice (JIPLP), I'll be delighted to hear from him or her.