New Decisions of the Technical Boards of Appeal 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

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

2 Life Science IP Seminar 2017 Life Science IP Seminar 2017

EPO Board of Appeal Statistics

2015-2016 Technical Cases at the EPO

Board of Appeal Cases


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.


EPO Case Law

….

**Immediately effective starting on 1 July 2017.


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


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


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


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


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.


EPO Case Law


EPO Case Law


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


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


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


EPO Case Law

EPO Press Release


EPO Case Law

Tomatoes and Broccoli

Open discussion and comments: Dr. Kinkeldey


Novelty

Novelty (2016 – 2017)

Novelty:

• T 437/14 – non-enabled prior art

• T 2369/10 – medical use device claims


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.


Novelty

Novelty: T 437/14


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.


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.


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)


Novelty

Novelty (2015 – 2016)



Sufficiency

Sufficiency (2015 – 2016)

Sufficiency:

• T 1727/12 – burden of proof / working requirement




• T 1846/10 – working requirements / undue burden

• T 0437/14 – functional features


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.


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)


Sufficiency


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) […].


Sufficiency


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)


Sufficiency


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.


Sufficiency



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)


Sufficiency


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.


Sufficiency


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)


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.


Sufficiency

Sufficiency: T 1846/10 (*Decision from 12 March 2015)


… 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)


Sufficiency

Sufficiency: T 437/14


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)


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)


Sufficiency



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)


Sufficiency



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)


Sufficiency



Consequently, no undue burden is needed to select those

complexes falling under the structural definition given in claim

1 that are phosphorescent.


Sufficiency

Sufficiency (2015 – 2016)



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


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.)



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)

https://www.epo.org/law-practice/legal-texts/html/epc/2016/e/ar114.html














http://www.epo.org/law-practice/case-law-appeals/advanced-search.html?site=BoA&filter=0&entqr=0&output=xml_no_dtd&client=BoA_AJAX&ud=1&num=100&oe=UTF-8&ie=UTF-8&q=&getfields=dg3TLE.dg3DecisionOnline.dg3APN.dg3DecisionDate.dg3DecisionPDF.dg3CaseIPC.dg3DecisionBoard.dg3DecisionPRL.dg3KEY.dg3DecisionDistributionKey.dg3ECLI&requiredfields&proxystylesheet=BoA_AJAX&advOpts=hide&start=0=&partialfields=dg3CSNCase:T+0156/84.dg3DecisionLang:EN







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)



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.)



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)



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)




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)



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)




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)



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)



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)





… 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)





… 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)





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)



prima facie relevance (2015 – 2016)



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



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



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



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



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.



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...



Statement of

grounds of appeal

Reply Summons Oral

Proceedings

Art. 12(4) Art. 13(1) Art. 13(3)

Art. 12(2)



Late Filing – Legal Provisions (2015 – 2016)



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)


Late Filing

Late Filing: T 2471/13 (*Decision from 13 March 2016)


… 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)


Late Filing



… 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)


Late Filing



… 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)


Late Filing


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)


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)


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.


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.


Late Filing

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)


Late Filing



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)


Late Filing



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)


Late Filing



… 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)


Late Filing

Late Filing (2015 – 2016)



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Documents

New Decisions of the Technical Boards of Appeal 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