Report of Recent EPO Decisions – September 2007

T 0763/04: Seat Furniture / Badia I Farre, Jordi.

TBA Decision of 22 June 2007

Chairman: M. Ceyte

Members: A. de Vries and T. Bokor

This is a decision of the TBA in respect of an appeal from the Examining Division refusing the appellant’s application for lack of novelty. The application in question concerned the shape of a seat of a bicycle saddle type, the crucial feature of which is an "open space…located in correspondence with the user’s genital area and allowing the latter to be accommodated therein", which had the stated benefit of increasing air circulation to the region.

The TBA determined that the Examining Division had refused the application without taking due account of the appellant’s arguments, particularly in relation to certain prior art, which did not, the TBA considered, destroy novelty under Article 54 EPC when it was appreciated that the open space described was located forward of the genital area and therefore did not allow a user’s genitals to be accommodated. Accordingly, it reversed the Examining Division’s decision.

Further, the TBA criticised the Examining Division’s apparent lack of heed of the appellant’s arguments as a breach of Article 113 EPC, which includes the right to have relevant grounds taken into account (T135/96 approved). In particular, the Examining Division’s decision appeared to have been drafted as though the appellant’s facts and arguments had been overlooked, the Board noting that there was no trace on the file that such material had either been read or discussed on the merits. The Board stated that Article 113(1) EPC "requires not merely that a party be given an opportunity to voice comments, but more importantly it requires that the deciding instance demonstrably hears and considers these comments." In the event, the Board granted the appellant’s request that its appeal fee should be reimbursed on the grounds that there had been a substantial procedural violation and the case was remitted to the Examining Division for further prosecution.

T 0225/03: Conical roller bearing for supporting a pinion shaft of a differential gear / NSK Ltd.

TBA Decision of 22 June 2007

Chairman: J. Osborne

Members: P. Weber and G. Weiss

This was an appeal of the Opposition Division’s decision to revoke a patent relating to conical roller bearings said to contribute to better fuel economy on automobiles. Notably, revocation was on the basis of lack of inventive step over an alleged prior public use by the opponent, and the appellant patentee had criticised the Opposition Division’s evaluation of the evidence.

In its appeal, the patentee pointed to the lack of pieces of filed evidence, the uncertainties about what exactly was used and the precise circumstances of the use, and argued that the alleged prior public use could not be considered established. It submitted that the correct standard of proof was "beyond any reasonable doubt", and that where the prior use is by the opponent himself, he has to prove his case "up to the hilt".

The TBA confirmed that, according to established caselaw, the burden of proof lies with the party claiming that the information was made available to the public. On the key issue of standard of proof, the Board noted that certain principles had been developed. There had been cases where appeal boards had applied a "balance of probabilities" standard, requiring the use to be more likely than not (e.g. T 381/87, T 296/93 and T 729/91). However, the TBA adopted the approach favoured by the patentee requiring proof "beyond any reasonable doubt" or "up to the hilt" which had been taken in other decisions including T 782/92, T 97/94 and T 848/94. In its view, this was more appropriate for the present case where revocation of a granted European patent was at issue and the evidence in support of the alleged prior use is within the power and knowledge of the opponent. The TBA observed that to base the revocation decision on the mere balance of probabilities of what might have occurred would be difficult to reconcile with the need for reliability in the decision-making procedures of the EPO.

It considered that the documentary evidence filed by the respondent was not sufficient, particularly with regard to the date on which the prior use occurred, exactly what the prior use was and the surrounding circumstances. However, the Opposition Division had not taken oral evidence from the opponent’s witness, so, expressing the view that the opponent’s request to compliment the documentary evidence with witness testimony should be granted, the TBA remitted the case back for further prosecution.

T 0788/05: Vascular Catheter / Terumo Kabushiki Kaisha

TBA Decision of 8 May 2007

Chairman: T. Kriner

Members: M. Noel, M. Vogel, R. Ries and A. Pignatelli

This was an appeal by both the patentee and the opponent following the Opposition Division’s decision to maintain a patent concerned with vascular catheters in amended form. The most significant point arising from the decision concerns an aspect of the EPO’s approach to priority.

Notably, the patentee was designated as an applicant in an earlier patent application, D1, on related subject matter, for which (unlike the patent under appeal) there was also a second applicant. Notwithstanding this, the opponent appellant in the present proceedings argued that, because the patentee was an applicant in both applications, the patentee had to be regarded as the "person" referred to in Article 87(1) EPC. Hence, in the opponent’s view, because document D1 concerned essentially the same invention, it was the "first application" within the meaning of Article 87(4) EPC, destroying the patentee’s claim to priority which was based on a later document.

Conversely, the patentee contented that because two different applicants were designated in D1 compared with one in the present application, the qualified "person" was different for the two documents, such that priory was valid.

The TBA agreed with the patentee. It considered that the term "a person" used in Article 87(1) EPC implied that the applicant be the same for the "first application" (or "previous application" in Article 88(1) EPC) and for the later application for which the priority right is claimed. This requirement arises because a right to priority is part of the applicant’s right. So, in the present case, the right to priory belongs simultaneously and jointly to the two applicants who constitute a legal unity unless one of them transfers the right to the other (who then becomes his successor in title) before filing the later application. Since no evidence had been submitted on transfer of the right, the TBA concluded that D1 could not represent the "first application" and that the priory date was valid.

The case is also of interest for its discussion of disclaimers and added matter which were an issue because the opponent appellant also challenged the disclaimer introduced by the patentee to re-establish novelty with regard to D1.

T 1396/06: HLA binding peptides and their uses / Epimmune Inc.

TBA Decision of 31 May 2007

Chairman: U. Kinkeldey

Members: M. Wieser and R. Moufang

This ruling of the TBA concerns an appeal from a decision of the Examining Division in which the appellant’s application was refused for lack of inventive step. The invention concerned immunogenic peptides of particular amino acid sequences, compositions containing the same and use of the peptides in medicine including, in particular, the treatment of HIV infection.

The Board upheld the Examining Division’s decision that the claims of the appellant’s main request and first and second auxiliary requests lacked inventive step. In relation to the main request, the Board decided that a combination of prior art documents was sufficient to direct the skilled addressee to arrive at the solution underlying the problem (the provision of peptides specifically binding to a particular HLA-allele); even though the evidence from the appellant suggested that the work involved would require considerable time and effort, the Board considered it to be of a routine nature. The Board noted that "certainty of success" was not required (cf. T 918/01) and that a claim lacked inventive step if the skilled addressee would arrive at the solution to the problem merely by following a "try it and see" approach (cf. T 91/98 and T 1045/98).

Two further points of interest arose from the Board’s consideration of a sixth auxiliary request made at the oral proceedings which, the Board decided, overcame the objections on inventive step. First, it confirmed the conclusion from decision T 1329/04 that supplementary post-published evidence may not serve as the sole basis on which it is established that the technical problem is solved (the appellant’s application disclosed behaviour of the peptide that suggested an immune response was likely, even though the actual data were published afterwards). Secondly, whilst Article 83 EPC requires an application to disclose the suitability of a product to be manufactured for a claimed therapeutic indication (confirming decision T 609/02), post-published evidence (e.g. clinical trials data) can be taken into account provided the application provides some information, such as experimental tests. The Board considered that the appellant’s application contained sufficient information from which it could be determined that the claimed peptide would act in the manner required (it was isolated from an HIV strain, contained a motif specific to the required allele and demonstrated sufficient binding affinity to elicit an immune response).

Accordingly, the Board remitted the case back to the department of first instance with an order to grant a patent on the basis of the claims of the sixth auxiliary request.

Extent of Protection and EPO Procedure (Articles 69 and 114(1) EPC)

T 0223/05: Irreversible inhibitors of tyrosine kinases / Warner-Lambert Company LLC

TBA Decision of 24 April 2007

Chairman: A. Nuss

Members: P. Ranguis and D. Rogers

In this case the appellant opponent appealed against the Opposition Division’s decision to maintain a patent in amended form. The appellant requested that the decision be set aside and that the patent, which included 70 claims, be revoked in its entirety. However, the appellant only submitted arguments that granted claims 18 to 25, 66 and 69 did not satisfy the requirements of the EPC. The question therefore arose as to whether the TBA had to examine the other claims of the patent against which the appellant had not put forward any arguments.

The TBA noted that the scope of Article 114(1) EPC in the context of an appeal from an Opposition Division had been considered by the Enlarged Board of Appeal in G 9/91. In that decision it was held that the appeal procedure (a judicial procedure) is by its very nature less investigative than the opposition procedure (an administrative procedure). It is therefore justified to apply Article 114(1) EPC in a more restrictive manner in an appeal procedure than in an opposition procedure. Accordingly, the TBA decided that it only had to consider the appeal as regards those claims upon which the appellant had advanced arguments. The appeal therefore only concerned the compatibility with the EPC of claims 18 to 25, 66 and 69, and the claims that were either wholly or partially dependent on those claims.

In relation to the substantive issues, there was a question mark over the interpretation of one of the claims which impacted upon whether it was novel and inventive over the cited prior art. It is notable that in dealing with this point, the TBA stated that Article 69 EPC and its protocol of interpretation do not provide a basis for excluding what is literally covered by the terms of the claims. It also observed that determining the extent of the protection of a patent is not the task of the EPO, but, according to Articles 64 and 69 EPC, that of the national courts competent in procedures on infringement cases (see T 740/96 and T 442/91).

Nevertheless, the observation of the TBA on the effect of Article 69 EPC and its protocol on limitations within a claim would seem to be fully consistent with the approach taken by the English Courts on the extent of protection which, as affirmed by Kirin Amgen, is firmly rooted in the wording of the claims.

EPO Procedure (Article 122 EPC)

T 0046/07: Self-moving vehicle for agricultural and industrial uses / Osvaldo Silvestrin

TBA Decision of 26 June 2007

Chairman: M. Ceyte

Members: M. Poock and C. Heath

In this case, the TBA held that if the fee for re-establishment of rights is paid after expiry of the two-month period laid down in Article 122(2) EPC, the application for re-establishment of rights does not come into existence and the fee must therefore be refunded even without a respective request.

The relevant chronology was as follows. The European Patent Application under consideration had been refused by the Examining Division on 14 August 2006. In a letter dated 22 December 2006 the applicant had asked for "the possibility of re-admittance" in view of an illness that prevented him from taking steps to preserve his rights and a fruitless visit to a firm of patent agents. The applicant then filed documents of appeal and paid the fees for re-establishment of rights and the appeal on 27 February 2007. The applicant also provided the TBA with a medical certificate covering the period from 6 October 2006 to 10 November 2006 and informed the TBA that the fruitless visit to the patent agents occurred on 9 November 2006.

However, as the illness that prevented the applicant from filing the appeal ended on 10 November 2006, the application for re-establishment of rights should have been filed by 11 January 2007. Since this did not occur until 27 February 2007, the application for re-establishment of rights and the notice of appeal were deemed never to have been filed, and, although presumably of little consolation to the applicant, the TBA decided that the associated fees must be refunded even without a respective request.