Delta Patents

T 428/13 - Proving an oral disclosure

Delta Patents Patent Law -

Not enough proof

This opponent tried to prove that Claim 1 of the main request had been orally disclosed.  The submitted proof included: the power point slides that were used in the presentation, an affidavit of the presenter, the colloquium report of the conference and the article on which the presentation was based (the latter two being published after the effective date). Unfortunately for the opponent it is not enough for the Board.
Reasons for the Decision 
(...)
3. Novelty
3.1 Novelty in view of D7 supported by D8 to D10
3.1.1 The oral disclosure D7 of Mr. Altena took place at the 57th Hardening Colloquium on 10. October 2001.
In the Affidavit D8, Mr. Altena describes what in his view has been presented at the conference by referring to Annex A1 (power point slides, which allegedly had been shown during the conference) and Annex A2 (representing preparation notes which allegedly reproduce the content of the talk held by Mr. Altena).
3.1.2 Concerning the content of an oral disclosure it is generally accepted case law, that a single declaration of the presenter of a lecture does not give sufficient proof of the content which has been disclosed orally or has been presented on slides prepared for the lecture (Case Law of the Boards of Appeal, Chapter I.C.3.2.2, see in particular T1212/97).
Following this generally accepted principle, the Affidavit of Mr. Altena (D8) on its own is not sufficient to give proof what had actually been disclosed orally when presenting the slides of Annex A1.
D9 and D10, which are a publication and a colloquium report on the same topic as the presentation D7, demonstrate that the content of the presentation of Mr. Altena was open to the public and that the presentation had taken place. However, these documents alone are not evidence of what had been disclosed orally. Furthermore, they are not prior art under Article 54(2) EPC themselves, since they have not been disclosed before the filing date of the contested patent.
Therefore it has not been demonstrated by the appellant to a sufficient standard what was orally made available to the public during the 57th Hardening Colloquium.
3.1.3 Thus, the Board concludes that it has not been shown that the subject-matter of claim 1 of the main request was orally made available at the conference in 2001.
(...)

This decision T 0428/13 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2017:T042813.20170919. The file wrapper can be found here. Photo by Noupload obtained via PixaBay under a CC0 license (no changes made).

J 3/17 - Buggy monitoring system

Delta Patents Patent Law -

A (Lego) bug...

In the present case, a PCT patent application was filed after expiry of the 12m priority period at the Chinese PCT receiving office by an Chinese agent acting as representative of the appellant.

The appellant filed a request for restoration of the right to priority with the European Patent Office as designated Office, which was refused by decision of the Receiving Section (whereas the request was submitted to and granted by the Chinese PCT receiving office under the 'unintentional' criterion).

The appellant now appeals before the EPO, and argues that 'all due care' has been taken.

Of interest in this case was that because of a bug that had up to then never been discovered, the electronic system which was used by the Chinese agent had given a reminder of the filing date only, not the priority deadline date. Unfortunately (for the appellant, but also for the interested reader), the appeal failed already on other reasons for not satisfying 'all due care', without going into detail on the implications of 'buggy' software wreaking havoc with otherwise carefully defined procedures.

Summary of Facts and Submissions
I. On 26 September 2014, the appellant (applicant) filed an international patent application with the Chinese patent office as receiving Office. The application claimed the priority of a Chinese patent application filed on 16 September 2013. Priority was therefore not claimed within the priority period.

II. The appellant submitted a request for restoration of the right to priority with the receiving Office in accordance with Rule 26bis.3(b) PCT. The same request was addressed to the European Patent Office as designated Office on 15 March 2016. The request was refused by decision of the Receiving Section of 12 December 2016. The appellant filed an appeal from this decision on 10 February 2017. The appeal fee was paid on the same day.

III. In the grounds for restoration the appellant explained as follows the events that had led to missing the deadline for filing the international application within the priority year:

The appellant used a Chinese agent, N.N., for filing PCT applications. According to instructions from the appellant, N.N. had been asked to draft the international application and file it on 22 August 2014, the priority deadline being 16 September 2014. These dates had been entered into N.N.'s electronic and paper time-limit monitoring system.

N.N. had sent a draft of the application to the appellant within these time limits. However, the member of the appellant's staff responsible had been on a business trip and unable to look into the matter. She had instructed N.N. to postpone submission of the application until 19 September 2014. N.N. staff had recorded the new date for submission of the application in the electronic and paper monitoring system. When picking up the case to send a reminder, N.N. had discovered that the priority-right deadline had already passed.

IV. Although restoration of the right to priority had been granted by the Chinese PCT receiving Office under the "unintentional" criterion, the EPO Receiving Section refused the request under the "due care" criterion. In essence the Receiving Section gave two reasons for its decision: 1) The appellant had not exercised all due care (in the meaning of Article 122 EPC) because its employee had given the instruction to delay submitting the application until 19 September 2014 without checking the priority deadline; 2) N.N. had not checked the new date for submission of the application against the priority deadline.

V. The appellant however argued that all due care had been taken. The main arguments in the grounds of appeal, submitted on 11 April 2017, can be summarised as follows:

The appellant had selected a sufficiently competent representative.

The employee's error was due to the fact that the necessary information had not been available to her during her business trip. She had assumed that N.N. would warn her if she were making a mistake. N.N. was fully responsible for the prosecution of the PCT application. The error was therefore the result of exceptional circumstances.

Specially assigned N.N. staff members monitored the time limits for all cases with the help of the electronic and paper monitoring system. This monitoring system had normally worked satisfactorily. In accordance with the employee's instructions, the new filing date, 19 September 2014, had been entered in both systems. Because of a bug that had up to then never been discovered, the electronic system had given a reminder of the filing date only, not the priority deadline date. This was to be regarded as an isolated mistake in a normally satisfactory system that had operated effectively for many years.

VI. The appellant requested that the decision under appeal be set aside and that the priority right be restored for the application at issue in the present case.

VII. The board summoned the appellant to oral proceedings to be held on 27 September 2017. In the accompanying communication the board expressed the preliminary view that the appeal should be dismissed.

VIII. In a letter dated 29 August 2017 the appellant responded to the summons to oral proceedings. The appellant underlined once more its view that both its employee and its agent had taken all due care as required by Article 122(1) EPC to meet the time limit for filing the international application within the priority year.

IX. In a letter dated 26 September 2017 the appellant informed the board that it would not be attending the oral proceedings and requested that a decision be issued in its absence.

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 99 EPC and is therefore admissible.

2. The admissibility of the request for restoration has to be considered by applying the PCT and its Regulations, supplemented by the provisions of the EPC (Article 150(2) EPC). Applying Rule 49ter.2(b) PCT the board concludes that the request is in accordance with the requirements of this article and thus admissible as well.

3. As the appellant was absent from the oral proceedings, it is treated as relying on its written case (Rule 115(2) EPC and Article 15(3) RPBA).

4. In its communication the board expressed the following position:

In essence the Receiving Section gave two reasons for its decision. The appellant had not exercised all due care (in the meaning of Article 122 EPC) because its employee had given the instruction to delay submitting the application until 19 September 2014 without checking the deadline for claiming priority. In addition, the appellant's representative (N.N.) had not checked the new date for submission of the application against the priority deadline.

The board tends to agree with the Receiving Section. The board cannot see any exceptional circumstances that account for the mistaken instruction to N.N.. If information about the priority deadline had not been available to the employee, due care would have required not giving the instruction without inquiring whether 19 September would meet the priority deadline. The employee could not just rely on N.N. to correct any mistakes. She should have taken care to avoid the mistake. For this reason alone, the appeal seems to fail.

Clearly N.N. staff did not check the priority deadline before entering the new date for submission of the application in the monitoring system. They should have done so and the staff members involved should have been instructed accordingly. Furthermore the board is currently not inclined to accept the view that the case brought to light an isolated mistake in an otherwise satisfactory monitoring system. The system did not check whether the priority deadline might be missed. In the board's preliminary view, this is a major flaw which means the monitoring system cannot be considered to be in general satisfactory. The board is therefore inclined to dismiss the appeal.

5. In its response to the communication of 29 August 2017 the appellant did not submit any arguments to support its view that had not already been brought forward in the statement of grounds and thus considered by the board. The board therefore sees no reason to deviate from its preliminary considerations and conclusion as expressed in the communication. The appeal is to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.

This decision J 3/17 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2017:J000317.20170927. The file wrapper can be found here. Photo "LEGO Creator 31031" by GiocoVisione obtained via Flickr under CC BY 2.0 license (no changes made).

Want to sit Pre-Exam 2019? You need to register before 1 January 2018!!!

Delta Patents Pre-Exam -

The Pre-Exam 2019 is more than 1 year away, but if you want to sit it, you will need to enrol in the April-May 2018 timeframe (no details have been published yet when enrolment opens and closes), and...
you need to register under Rule 28 IPREE with the Exam Secretariat at the latest by 1 January 2018!!!

Candidates who have not registered by this deadline will not be able to enrol for the pre-examination.

Registration is only possible online as described in OJ EPO 2017, A24. More detailed information can be found on the EQE website (www.epo.org/eqe).

Further information can be found in:

  • Notice from the Examination Secretariat for the European qualifying examination - Compulsory registration prior to first-time enrolment to the EQE - OJ EPO 2017, A78 (29.09.2017)
  • Notice from the Examination Secretariat for the European qualifying examination - Registration pursuant to Rule 28 of the Implementing provisions to the Regulation on the European qualifying examination, OJ EPO 2017, A24 (31.03.2017)
  • Decision of the Supervisory Board of 13 February 2017, link on EQE website

T 1332/12 - Admission of corrected translation of prior art in opposition appeal

Delta Patents Patent Law -


The opposition division decided that the subject-matter of claim 1 of the main, first, second and third auxiliary requests lacked inventive step over the disclosure of document D7 (JP 07-131734 A) and the common general knowledge of the person skilled in the art (Articles 56 and 100(a) EPC). For the analysis of inventive step, the opposition division referred to document D7T, which was a JPO machine translation of document D7 into English. The patent proprietor (appellant) filed an appeal against this decision and requested that the decision be set aside. In the statement of grounds of appeal, it requested that the patent be maintained in amended form. It submitted arguments as to why the subject-matter of claim 1 of each of the requests met the requirements of Article 56 EPC. With a letter dated 12 October 2015, the appellant submitted a different translation of document D7 (D7JPO) because "the Japanese and the original and the previously translated prior art document D7T is not precise in many aspects". In a communication under Article 15(1) RPBA, annexed to the summons to oral proceedings, the board indicated that it tended to agree with the opposition division's finding that the then second and third auxiliary requests lacked inventive step. It also indicated that it had to be discussed whether translation D7JPO should be admitted into the appeal proceedings (Article 13(1) RPBA).

Summary of Facts and Submissions

I. The appeal is against the interlocutory decision of the opposition division that, account being taken of the amendments made by the patent proprietor according to the then sixth auxiliary request, European patent No. 1 848 203 and the invention to which it related met the requirements of the EPC (Article 101(3)(a) EPC). The patent is based on European patent application No. 06 008 001.7.

II. Notice of opposition to the patent had been filed by the Interessengemeinschaft für Rundfunkschutzrechte e.V. (hereinafter: the respondent).

III. The opposition was based on the grounds under Article 100(a) EPC.

The opposition division decided that the subject-matter of claim 1 of the main, first, second and third auxiliary requests lacked inventive step over the disclosure of document D7 (JP 07-131734 A) and the common general knowledge of the person skilled in the art (Articles 56 and 100(a) EPC), and that the subject-matter of claim 1 of the fourth and fifth auxiliary requests extended beyond the disclosure of the application as filed (Article 123(2) EPC). For the analysis of inventive step, the opposition division referred to document D7T, which was a JPO machine translation of document D7 into English.

IV. The patent proprietor (hereinafter: appellant) filed an appeal against this decision and requested that the decision be set aside. In the statement of grounds of appeal, it requested that the patent be maintained in amended form on the basis of the claims according to a main request or an auxiliary request, corresponding to the second and third auxiliary requests, respectively, underlying the decision under appeal. It submitted arguments as to why the subject-matter of claim 1 of each of these requests met the requirements of Article 56 EPC.

V. The respondent filed a reply to the appeal, and requested that the appeal be dismissed.

VI. With a letter dated 12 October 2015, the appellant submitted a different translation of document D7 (D7JPO) because "the Japanese and the original and the previously translated prior art document D7T is not precise in many aspects". The appellant provided additional arguments as to why the subject-matter of claim 1 of the main request and the auxiliary request should be considered to involve an inventive step (Article 56 EPC).

VII. In a communication under Article 15(1) RPBA (Rules of Procedure of the Boards of Appeal, OJ EPO 2007, 536), annexed to the summons to oral proceedings, the board indicated that it tended to agree with the opposition division's finding that the then second and third auxiliary requests lacked inventive step. It also indicated that it had to be discussed whether translation D7JPO should be admitted into the appeal proceedings (Article 13(1) RPBA).

VIII. In reply to that communication, the appellant argued that D7JPO was not late-filed because it had been submitted in response to the opponent's interpretation of D7 in the reply to the statement of grounds of appeal. It submitted further arguments in support of inventive step.

IX. The respondent informed the board with a letter dated 22 September 2017 that it would not be represented at the oral proceedings.

X. Oral proceedings before the board were held on 11 October 2017 in the absence of the duly summoned respondent.

At the beginning of the oral proceedings, the chairman informed the appellant that translation D7JPO was admitted into the proceedings and the discussion of inventive step was to be based on it.

During the oral proceedings, the appellant, in essence, reiterated the arguments set out in the written proceedings.

The appellant requested that the decision under appeal be set aside and that the patent be maintained in amended form on the basis of the claims according to the main request or the auxiliary request, corresponding to the second and third auxiliary requests, respectively, underlying the decision under appeal.

The chairman noted that the respondent had requested in writing that the appeal be dismissed.

XI. At the end of the oral proceedings the chairman announced the board's decision.

XII. Claim 1 of the main request reads as follows:

"A method of converting video images, comprising: [...] "

XIII. Claim 1 of the auxiliary request differs from claim 1 of the main request in that it also includes the following feature [...].

XIV. The opposition division's arguments, as far as they are relevant for the present decision, may be summarised as follows:

Document D7 was identified as the closest prior art for the assessment of inventive step 
(Article 56 EPC). The opposition division reasoned that "D7 appears to achieve the same effect as the claimed subject-matter, since distortions created by non-linear scaling are compensated for the text/title/caption portion [...] D7 provides the same effect for horizontal scrolling text, since scrolling text will be moving on a field by field basis which is taken care of in the processing by circuitry of fig. 8".

XV. The appellant's arguments, as far as they are relevant for the present decision, may be summarised as follows: [...].

XVI. The respondent concurred with the opposition division that D7 disclosed [...].

Reasons for the Decision

1. The appeal is admissible.

2. Admission of translation D7JPO into the appeal proceedings (Article 13(1) RPBA)

2.1 The respondent filed a copy of Japanese application D7 (JP 07-131734 A) as evidence of the prior art under Article 54(2) EPC 1973 and a JPO machine translation of that document into English (D7T). In response to the respondent's reply, the appellant filed document D7JPO, which is also a JPO machine translation of document D7 into English, but of a later date and, in the appellant's view, a more accurate translation.

2.2 There is nothing in the EPC to prevent a party from filing a corrected translation of a document filed as evidence, even if the evidence and/or translation was filed by the other party to the proceedings. The board takes the view that this also applies if the document is a patent application, taking into account that, under the EPC, the translation of a European patent application or an international application into an official language of the EPO may generally be brought into conformity with the application as filed (Article 14(2) EPC 1973 regarding European patent applications; decisions T 700/05 and T 1483/10 regarding international applications). Hence, the board considers that the translation into English of Japanese prior-art document D7 may be brought into conformity with the original.

2.3 Moreover, the board concurs with the appellant that the differences between the two translations are minor and result in a linguistic clarification of certain passages in D7T without changing its technical disclosure.

2.4 In view of the above, the board, exercising its discretion under Article 13(1) RPBA, decided to admit translation D7JPO into the appeal proceedings and base the discussions of inventive step on D7, referring to the text of translation D7JPO.

3. Main request - inventive step (Article 56 EPC 1973)

3.1 -3.6 [...].

3.7 Thus, the board concludes that for the reasons set out in points 3.1 to 3.5 above, the subject-matter of claim 1 of the main request lacks inventive step over the disclosure of document D7 combined with the common general knowledge of the person skilled in the art (Article 56 EPC 1973). Hence, the patent cannot be maintained in amended form on the basis of the claims of the main request.

4. Auxiliary request - inventive step (Article 56 EPC 1973)

4.1 [...]

4.2 Thus, the board concludes that for the reasons set out in section 3 and point 4.1 above, the subject-matter of claim 1 of the auxiliary request lacks inventive step over the disclosure of document D7 combined with the common general knowledge of the person skilled in the art (Article 56 EPC 1973). Hence, the patent cannot be maintained in amended form on the basis of the claims of the auxiliary request.

5. In view of the above, neither of the appellant's requests is allowable. Hence, the appeal is to be dismissed.

Order

For these reasons it is decided that:


The appeal is dismissed.


This decision T 1332/12 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:T133212.20171011. The file wrapper can be found here. Photo "Japanese style garden" by Tanaka Juuyoh obtained via Flickr under CC BY 2.0 license (no changes made).

T 782/16 Can the content of a divisional be derived from an omnibus parent?

Delta Patents Patent Law -


In this opposition appeal the Board had to assess if the opposed claims could be derived from the filed divisional and parent. In the Board's view, the "gold" standard for the assessment of Articles 123(2) and 76(1) EPC requires that the subject-matter of an amended claim (or of a claim of a divisional application) be based only on what the skilled person would directly and unambiguously derive from the application as originally filed (or from the earlier application; see G 2/10). For a correct application of this standard, a distinction needs to be made between subject-matter which is disclosed either implicitly or explicitly in the original (or earlier) application and therefore can be directly derived from it, and subject-matter which is the result of an intellectual process, in particular a complex one, carried out on what is disclosed. The Board concluded that the latter was the case.

Summary of Facts and Submissions

I. European patent No. 2 292 219, based on European application 10179085.5 filed as a divisional of the earlier application 06816633.9, was granted on the basis of one claim reading as follows:

"1. Rivastigmine for use in a method of preventing, treating or delaying progression of dementia or Alzheimer's disease, wherein the rivastigmine is administered in a TTS and the starting dose is that of a bilayer TTS of 5 cm**(2) with a loaded dose of 9 mg rivastigmine, wherein one layer:

has a weight per unit area of 60 g/m2 and the following composition:

- rivastigmine free base 30.0 wt%

- Durotak® 387-2353 (polyacrylate adhesive) 49.9 wt%

- Plastoid® B (acrylate copolymer) 20.0 wt%

- Vitamin E 0.1 wt%

and wherein said layer is provided with a silicone adhesive layer having a weight per unit area of 30 g/m2 according to the following composition:

- Bio-PSA® Q7-4302 (silicone adhesive) 98.9 wt%

- Silicone oil 1.0 wt %

- Vitamin E 0.1 wt%".

II. The patent was opposed on multiple grounds, including that its subject-matter extended beyond the content of the application as filed and beyond the content of the earlier application.

III. By decision posted on 15 March 2016 the patent was revoked. The decision was based on a main request and three auxiliary requests. The main request, auxiliary request 1 and auxiliary request 3 were filed on 15 October 2015. Auxiliary request 2 was the patent as granted.

Each request consisted of a single claim relating to rivastigmine administered via a transdermal therapeutic system (TTS), wherein said TTS was characterised by a starting dose defined as in claim 1 of the patent as granted (see point I above).

The following document was referred to in the appealed decision:

B29: WO2007/064407 - parent application of the patent.

IV. In the appealed decision, the opposition division held that claim 1 of the main request related to any TTS providing the same starting dose as the specific TTS of 5 cm**(2)referred to in the claim. The subject-matter of the claim had no basis in document B29. In particular, this subject-matter could be derived neither from example IV nor from page 11, contrary to what the patent proprietors argued. Thus, the main request did not comply with Articles 123(2) and 76(1) EPC. These conclusions applied to the subject-matter of the auxiliary requests too.

V. The patent proprietors (hereinafter: the appellants) filed an appeal against that decision. With the statement setting out the grounds of appeal filed on 25 July 2016, the appellants submitted seven auxiliary requests.

Claim 1 of auxiliary request 1 differed from claim 1 of the patent as granted by the addition of expression "once a day" before the words "starting dose".

Claim 1 of auxiliary request 2 differed from claim 1 of the patent as granted in that the feature "dementia or Alzheimer's disease" had been replaced by "mild to moderate Alzheimer's disease".

Claim 1 of auxiliary request 3 differed from claim 1 of the patent as granted in that it included both amendments introduced in auxiliary requests 1 and 2.

Claim 1 of auxiliary requests 4 to 7 was based on claim 1 of the granted patent and of the first three auxiliary requests, respectively, but included the following feature, at the end of the claim:

"an AUC24h of 25 to 450 ng*h/mL after repeated once daily administration provided".

VI. Replies to the appeal of the patent proprietors were submitted by opponents 2, 3, 5 to 8, 10, 13 and 14 (hereinafter: respondents 2, 3, 5 to 8, 10, 13 and 14).

By letter of 4 November 2016, opponent 4 withdrew its opposition.

VII. Oral proceedings were held on 18 July 2017. For information on the course of the oral proceedings, reference is made to the minutes.

VIII. The appellants' arguments can be summarised as follows:

B29 contained embodiments which were directed to a "structural invention" relating to a TTS with a particular adhesive layer but not restricted to rivastigmine, and other embodiments directed to a "use invention" relating to TTSs that provided specific rivastigmine release profiles but which were not limited by any further structural features. The "structural invention" and the "use invention" were clearly presented in B29 as separable. The skilled team, with competence both in medicine and in the field of pharmaceutical formulations, would have concluded that use embodiments relating to rivastigmine TTSs need not be limited to TTSs having a particular structure. This applied in particular to the disclosure of example IV and to the first paragraph of page 11. Example IV disclosed a study in which a group of patients were treated either with capsules of rivastigmine or with a TTS containing rivastigmine. At the beginning of the study, the patients treated with the TTS inherently received a starting dose. This would have been clear to a skilled person despite the fact that it was not spelled out expressis verbis. In comparing tables 1 and 2 of example IV, the skilled team would have immediately noted that the AUC24h for the TTS starting dose was approximately four times higher than for the oral starting dose. Furthermore, as explained on page 9 of B29, the skilled team knew that the same starting dose could be obtained with other TTSs, different from the specific TTS used in the study of example IV. Accordingly, it was permissible to base a claim on the same starting dose as delivered by the TTS of example IV but with no restriction on the structure of the TTS. The first paragraph of page 11 containing an explicit reference to rivastigmine was a further embodiment of the "use invention". This paragraph was not restricted to any specific TTS. The skilled team would have linked the reference to a "higher starting dose" to the starting dose of the TTS used in example IV, since no other starting dose was mentioned in B29. The combination of the passage on page 11 and example IV provided a basis for the subject-matter of claim 1.

IX. The respondents argued inter alia that example IV of B29 described a study concerning the pharmacokinetic properties of a specific rivastigmine TTS named TTS#2. The results disclosed in this example were linked to the use of this specific TTS. There was no basis for a generalisation to cover any TTS providing the same starting dose as TTS#2. The passage on page 11 did not contain any link to example IV. Even assuming that the skilled person would have combined page 11 and example IV, he would have nonetheless concluded that it was possible to increase the starting dose of rivastigmine by the use of the specific TTS of example IV. Accordingly, the subject-matter of claim 1 could not be directly and unambiguously derived from B29.

X. The appellants requested that the decision under appeal be set aside and that the case be remitted to the opposition division for consideration of any grounds other than Article 100(c) EPC on the basis of the patent as granted or on the basis of one of the seven auxiliary requests filed with the statement setting out the grounds of appeal on 25 July 2016, and that the appeal fee be reimbursed.

XI. Respondents 2, 3, 5, 6, 7, 8, 10, 11, 12, 13 and 14 requested that the appeal be dismissed.

Respondents 2 and 13 furthermore requested that auxiliary requests 4 to 7 not be admitted into the appeal proceedings.

Reasons for the Decision

MAIN REQUEST (GRANTED PATENT)

Articles 76(1) and 123(2) EPC

1. In line with the approach taken in the appealed decision and by the parties, the Board will assess compliance with the requirements of Articles 76(1) and 123(2) EPC by comparing the subject-matter of claim 1 with the disclosure of document B29, i.e. the publication of the parent application. This document is identical to the parent application as originally filed and is incorporated in the application underlying the patent in suit as originally filed.

2. The subject-matter of the patent

2.1 The patent contains a single claim drafted in the format of a purpose-limited product claim pursuant to Article 54(5) EPC (see point I above). In point 3 of its decision, the opposition division construed claim 1 as granted "as encompassing any TTS as long as it comprises rivastigmine and as long as in the use of claim 1 there is provided a certain "starting dose". The amount of the starting dose is corresponding to that provided by the TTS having the structural features as indicated in claim 1. These structural features, however, are intended to define the starting dose only, not the TTS employed in the medical use of claim 1 as such".

The Board agrees with this interpretation of claim 1. It is noted that none of the parties proposes a different reading of the claim.

3. The disclosure of B29

3.1 In their written submissions and during the oral proceedings, the appellants presented some general observations concerning the content of B29 as a preliminary remark for a correct interpretation of this document and in particular of the passages supposedly providing the basis for the subject-matter of claim 1, namely example IV and the first paragraph of page 11 (see below).

The Board therefore finds it appropriate to analyse the general disclosure of B29 before considering the specific passages of this document that supposedly provide a basis for the subject-matter of claim 1.

3.2 The appellants emphasise that B29 is a so-called omnibus application containing two separable embodiments. The first ("the structural invention") relates to a particular TTS which is defined in claim 1 and which is not restricted to rivastigmine, and the second ("the use invention") relates to TTSs that provide specific rivastigmine release profiles but which are not limited by any further structural features.

3.3 The Board observes that the description of B29 discloses, from paragraph 5 of page 1 to paragraph 2 of page 2, a number of objectives of the invention. The third paragraph of page 2 then states that these objectives are achieved by a TTS as defined in claim 1, which is characterised by the presence of an adhesive layer with a silicone polymer. This TTS represents, in the Board's view, the central aspect of the invention disclosed in B29. Indeed, the eighth paragraph of page 2 states that "[t]ests with active ingredients for the treatment of Alzheimer's disease have surprisingly shown that a line of silicone adhesive can be applied to a poorly adhesive reservoir matrix, thus significantly increasing the adhesive properties of the preparation without affecting the thermodynamic properties of the TTS". On the basis of this finding, the invention disclosed in B29 provides a TTS comprising (a) a backing layer, (b) a reservoir layer and (c) an adhesive layer with a silicone polymer (page 3, lines 5 to 7 and claim 1). TTS#2, the patch used in the clinical test disclosed in example IV is a TTS with these structural features.

Thus, what the appellant defines as the structural invention, represents in the Board's view the core of the disclosure of B29.

3.4 The appellants mentioned various passages of B29 as representative of the "use invention", for instance the third paragraph on page 3 ("The present invention is further related to a method for substantially improving the efficacy and tolerability of rivastigmine, comprising application of a TTS in the range of 2 to 50 cm**(2), said formulation providing a mean maximum plasma concentration of about 1 to 30 ng/mL...") or the fourth paragraph on page 9 ("The invention further provides a TTS comprising as active ingredient rivastigmine...having a mean maximum plasma concentration of about 1 to 30 ng/ml...and an AUC 24h of about 25 to 450 ng*h/mL ...").

In the Board's view, the skilled audience could well attribute all these passages to the "structural invention", i.e. it could consider the TTSs referred to in these paragraphs to be the same TTSs defined in claim 1 or on page 3 of B29. Indeed, B29 does not refer to any other type of TTS. Furthermore, the experimental data concerning the plasma concentration of rivastigmine disclosed in the patent (see example IV and figures 3 and 4) relate to tests carried out using TTS#2, i.e. a TTS according to claim 1 of B29. Hence, the specific rivastigmine release profiles, that characterise the "use invention" according to the appellants are in fact achieved by the use of the TTSs of claim 1. Moreover, as discussed above, on pages 1 and 2 B29 describes a number of objectives of the invention which include methods of treatment based on the administration of rivastigmine. The sole solution proposed in B29 to achieve these objectives is "by a TTS as defined in claim 1" (page 2, line 8).

Thus, the Board is not convinced that B29 relates to two groups of independent inventions, namely a "structural invention" and a "use invention".

3.5 In any case, the Board sees no need to establish whether one or more independent inventions are disclosed in B29. What matters in the assessment of compliance with Articles 76(1) and 123(2) EPC is to establish whether the subject-matter of the patent can be derived in a clear and unambiguous manner from the disclosure of B29.

The appellants do not disputed that B29 does not explicitly disclose the subject-matter of claim 1. In their opinion, however, this subject-matter can be derived from document B29 in two different ways: based on the disclosure of example IV (defined by the appellants as derivation#1) and on the first paragraph of page 11 (defined by the appellants as derivation#2). These are discussed below.
4. Possible derivations of the subject-matter of claim 1

4.1 Derivation#1

4.1.1 Example IV describes a study carried out on patients with mild to moderate Alzheimer's disease. The patients received either an oral formulation of rivastigmine (Exelon® capsules) or a transdermal one. The transdermal formulation is the patch TTS#2 which is described in example I of B29. The study comprised four periods with an increasing dosage of the active ingredient. In the first period the patients were treated either with 1.5 mg bid (twice a day) of Exelon® or with TTS#2 of 5 cm**(2). In the second to fourth periods the patients were treated with increasing doses of rivastigmine: the patients enrolled for the oral therapy received 3 mg, 4.5 mg and 6 mg bid Exelon®; those in the transdermal therapy were treated with TTS#2 patches of 10 cm**(2), 15 cm**(2) and 20 cm**(2). Tables 1 and 2 provide a summary of the pharmacokinetic parameters of rivastigmine following capsule administration (Table 1) or the TTS#2 application (Table 2). The pharmacokinetic parameters include the maximum serum concentration (Cmax), the time at which the Cmax is observed (tmax), the half-life (t1/2) and the 24-hour area under the concentration-time curve (AUC24h). The data relate to the four periods.

4.1.2 The Board notes that example IV does not contain any reference to a TTS other than the patch TTS#2 used on the patients. Nor is there anything in this example to indicate using a TTS other than TTS#2.

4.1.3 The appellants argue that a skilled team, composed of experts in medicine and in the field of pharmaceutical formulations, would have noted that the AUC24h provided by the TTS#2 of 5 cm**(2)was approximately four times higher than the AUC24h obtained with 1.5 mg twice a day of Exelon®. They would have then considered using any TTS providing the same dose as the TTS#2 of 5 cm**(2).

In the Board's view, the appellants' reasoning is not in line with the "gold" standard required for the assessment of Articles 123(2) and 76(1) EPC. This standard requires that the subject-matter of an amended claim (or of a claim of a divisional application) be based only on what the skilled person would directly and unambiguously derive from the application as originally filed (or from the earlier application; see G 2/10, point 4.3 of the Reasons). For a correct application of this standard, a distinction needs to be made between subject-matter which is disclosed either implicitly or explicitly in the original (or earlier) application and therefore can be directly derived from it, and subject-matter which is the result of an intellectual process, in particular a complex one, carried out on what is disclosed.
The intellectual process undertaken by the appellants to reach claim 1 from example IV comprises the steps of:

(a) singling out from all the data disclosed in tables 1 and 2 the AUC24h of the TTS#2 of 5 cm**(2)and of the capsules of 1.5 mg;

(b) comparing these two pieces of data;

(c) formulating the idea of using any TTS that is capable of providing the same rivastigmine dose as the TTS#2 of 5 cm**(2).

In this context the Board notes that the AUC24h values obtained with the TTS#2 patches of 10 cm**(2), 15 cm**(2) and 20 cm**(2)are also much higher than the AUC24h values obtained with the capsules of 3 mg, 4.5 mg and 6 mg bid Exelon®. Example IV is silent about the relevance of the AUC24h of the TTS#2 of 5 cm**(2). There is also no indication to use a TTS different than TTS#2 but capable of providing the rivastigmine release of the TTS#2 of 5 cm**(2). In other words, the clinical study described in example IV relates to the application of a specific patch, namely TTS#2.

The appellants' reasoning is therefore based on an intellectual processing of the subject-matter disclosed in the original (or earlier) application rather than a direct and unambiguous derivation as required by the "gold" standard. No matter whether or not such processing is based on obvious considerations, such a reasoning cannot be used to justify the compliance with Articles 76(1) and 123(2) EPC.

4.1.4 The arguments put forward by the appellants in relation to the information disclosed on page 9 of B29 do not invalidate the above conclusions.

Paragraph 4 of page 9 states that the invention provides a TTS comprising rivastigmine "having a mean maximum plasma concentration of about 1 to 30 ng/ml...and an AUC 24h of about 25 to 450 ng*h/mL". The following paragraph explains that a skilled person would be familiar with "how to produce a TTS having the above defined plasma profiles" and how a patch could be modified in order to obtain the desired plasma profile. In the appellants' view, the skilled audience would link these passages to example IV, finding an indication to provide patches other than the TTS#2 that are nonetheless capable of providing the same dose as the TTS#2 of 5 cm**(2).

4.1.5 The Board is not persuaded by this argument. Page 9 does not contain any reference to example IV. Nor is there any indication that the instructions on how to produce a TTS providing a certain plasma profile should be applied to produce any TTS with the same rivastigmine release profile as the TTS#2 of 5 cm**(2).

The skilled audience would read the passages on page 9 referred to by the appellants in relation to the main subject of the invention, namely the provision of the TTS described on page 3, lines 5 to 7 (see point 3.3 above). In this respect it is noted that the passage on page 9 refers to the possibility of modifying the adhesive layer. Whereas the TTS of claim 1 contains an adhesive layer, not every TTS does. The skilled team would therefore consider the general instructions of page 9 not to constitute an indication to produce any TTS, regardless of its structure. Rather, they are instructions on how to prepare or modify TTSs of the type described on page 3 in order to obtain such plasma profiles. Indeed, the sole pharmacokinetic data disclosed in B29 are those in example IV for TTS#2, i.e. a TTS comprising a backing layer a reservoir layer and an adhesive layer with a silicone polymer, just like the TTS defined on page 3.

4.1.6 It follows that example IV does not constitute a valid basis for a claim directed to any TTS providing the same rivastigmine release as the TTS#2 of 5 cm**(2).

4.2 Derivation#2

4.2.1 The appellants' proposed alternative way to derive the subject-matter of claim 1 from the disclosure of B29 is based on the first paragraph of page 11. This passage of the description indicates that "the TTS of the invention...may allow a higher starting dose". In the appellants' view, the skilled team would link this passage to the starting dose of example IV since no other starting dose is disclosed in B29. It would also regard this sentence as defining an embodiment of "the use invention", which is not limited to any particular TTS. This would provide a direct basis for the subject-matter of claim 1.

4.2.2 In the Board's view, this position is not tenable. The most straightforward and logical way of interpreting the wording "the TTS of the invention" (page 11, line 1) is to consider it to refer to the TTS defined on page 3, lines 5 to 7, and in claim 1. Indeed, as explained in paragraph 3.3 above, this TTS represents the core of the invention disclosed in B29 and is the subject of claim 1 of B29.

Any other interpretation based on the assumption that "the TTS of the invention" is not the one in claim 1 seems much less logical, and in any case, such an interpretation could not invalidate the most logical one. Thus, in the best-case scenario for the appellants, there could be a second interpretation based on the assumption that "the TTS of the invention" is not the one in claim 1 but is "any TTS". That would imply that the sentence on page 11 is ambiguous in that it is open to various interpretations. However, using an ambiguous sentence as a basis for the subject-matter of an amended claim (or a claim of a divisional application) is against the principle that this subject-matter should be derived in a an unambiguous manner from the (earlier) application.

4.2.3 "Derivation#2" has a further deficiency, namely the absence of any link to example IV. Therefore, the appellants' argument that the "starting dose" referred to in the sentence on page 11 is the one of example IV is not based on an objective interpretation of this sentence. If, for the sake of argument, it is accepted that the skilled team would establish a link between page 11 and example IV, there would still be the problem that example IV relates to the use of a specific TTS which is a TTS according to claim 1 of B29. Thus, it could still not be concluded that the sentence of page 11 relates to a structurally undefined TTS providing the same release as the TTS#2 of 5 cm**(2).

4.2.4 In the light of the considerations set out above, the Board concludes that the first paragraph of page 11 of B29 does not provide a basis for the subject-matter of claim 1 either.

4.3 It follows that the patent does not meet the requirements of Articles 123(2) and 76(1) EPC.

AUXILIARY REQUESTS 1 to 7

5. Each of these requests relates to a rivastigmine-based TTS which is not structurally defined and is characterised by providing the same starting dose a the TTS of 5 cm**(2) used in the experiments of example IV.

The considerations set out in respect of the main request apply to the auxiliary requests too. Thus, auxiliary requests 1 to 7 are likewise considered to contravene Articles 123(2) and 76(1) EPC.

In view of the above, the Board does not need to decide on the admissibility of auxiliary requests 4 to 7.

REQUEST FOR REIMBURSEMENT OF THE APPEAL FEE

6. As the appeal is not allowed, the appellants' request for reimbursement of the appeal fee has to be rejected, Rule 103(1)(a) EPC.

Order

For these reasons it is decided that:

1. The appeal is dismissed.

2. The request for reimbursement of the appeal fee is rejected.

This decision T 782/16 (pdf) has European Case Law Identifier:ECLI:EP:BA:2017:T078216.20170718. The file wrapper can be found here. Photo by Rodrigo Senna obtained via Flickr under Public Domain Mark 1.0.

T 2406/16 - Reestablishment when appeal fee not paid

Delta Patents Patent Law -


It's another one of those nightmare scenario's. A notice of opposition is filed but the appeal fee is not paid. 
The attorney signed a notice of opposition and instructed his assistant to file the notice and pay the fee as soon as the deposit account contains enough funds. The latter requires checking with the CFO that there are enough funds in the deposit account, and can take a few days. Unfortunately, the assistent accidentally removed the due date from the system when the notice is filed. This  should not have been done until the payment was made. The board did not view this as an isolated mistake and refused the reinstate the case. 

Reasons for the Decision
(...)
Hence, the request for re-establishment of rights is admissible.
3. The appellant has, however, not shown that all due care required by the circumstances was taken to comply with the time limit for filing the appeal fee (Article 122(1) EPC).
3.1 In the case at hand, the appellant submits that the failure to comply with the missed time limit resulted from the decision to send the notice of appeal before payment of the appeal fee and the erroneous simultaneous removal of the time limit from the docketing system by an assistant, which went unnoticed by the representative.
3.2 In the case of non-observance of a time limit due to an error, the boards of appeal have established the criterion that due care is considered to have been taken if non-compliance with the time limit resulted either from exceptional circumstances or from an isolated mistake within a normally satisfactory monitoring system (Case Law of the Boards of Appeal (hereinafter "CLBA"), 8th ed., III.E.5.2., penultimate paragraph). It is the appellant's contention that the present case amounts to such an isolated mistake.
3.3 The party requesting re-establishment of rights bears the burden of making the case and proving that the requirements are met (CLBA supra, III.E.5.2., last paragraph). Thus, in the present case the appellant bears the burden of proof to show the existence of a normally satisfactory monitoring system.
3.4 The Board observes that eOLF in combination with a docketing system for monitoring the relevant time limits, when used as intended by an experienced and well trained assistant such as Ms EN under the supervision of a carefully acting representative such as Mr FC, could under most circumstances provide a satisfactory monitoring system to deal with time limits such as the one for filing a notice of appeal. However, the system described is imperfect insofar as it does not guarantee sufficient supervision under all circumstances, in particular not in cases where the usual order of processing steps is intentionally or accidentally changed or interrupted, as will be described below.
3.5 In the present case, the monitoring system was overridden before the error occurred (see 3.5.1) and the way information was exchanged between the patent department and the accounts department (see 3.5.2) made the system error-prone to begin with.
3.5.1 The normal routine of having everything necessary to file an appeal prepared by the assistant and having the representative perform a cross-check when electronically signing the notice of appeal was not followed in the case at hand. Instead the representative signed a notice of appeal containing the (then) inaccurate statement "the decision is hereby appealed and the prescribed fee paid" (italics added by the board) and left it to the assistant to pay the fee later once the CFO had informed her that there were sufficient funds in the deposit account. Whereas the normal routine made sure that the representative, who is the only one allowed to sign submissions, would certainly perform the cross-check, the deviation therefrom meant that the assistant could single-handedly make the payment and remove the time limit from the docketing system (see appellant's letter of 8 September 2017, page 2, third paragraph), so a cross-check was missing. This, however, allowed the assistant's error to remain unnoticed by the representative, who did no longer need to be involved with the matter.
3.5.2 According to the appellant's submissions, it is the patent department's task to pay fees from the company's account with the EPO by giving an order in eOLF. Yet patent attorneys and their assistants apparently do not have access to the account balance. Thus, they cannot check themselves whether there are sufficient funds to make the payment, and need to get information from the accounts department before they can issue a payment order. However, according to the Appellant's submissions, it appears to be rather difficult to get this information. It is not sufficient to contact a colleague from the accounts department because the account balance is reviewed only once or twice a week (cf. letter of 10 February 2017, paragraph bridging pages 2 and 3). Thus, even when there are sufficient funds in the account, as was the case on 1 September 2016, it might well happen, as in the present case, that members of the accounts department are not in a position to give the green light for payments because the account balance has not been checked recently enough. Since they do not normally perform checks on demand (cf. letter of 8 September 2017, paragraph bridging pages 1 and 2), the only way to get the information needed is apparently to contact the accounts department repeatedly until the point in time where the account's balance has just been checked and the department is, thus, able to provide the required information. It is evident that such a system is unreliable and prone to error.
3.5.3 Thus, changing the normal routine of checking whether the appeal fee has been paid when the notice of appeal is being sent and leaving it, instead, to the assistant to pay the appeal fee as soon as she received information from the accounts department regarding the required funds, meant intentionally deviating from a potentially satisfactory system to a system that was subject to uncertainties. These became apparent after Ms EN had erroneously removed the due date in the docketing system. Ms JS forgot to get back to Ms EN and Ms EN forgot to make further attempts to get the required information from the accounts department. Moreover, the need to deviate from the common routine only arose as a consequence of the defective information system. In a system where patent assistants have immediate access to the account balance, be it electronically or by some other reliable way of getting the latest information from the accounts department, Mr FC would not have had to deviate from the normal routine and entrust Ms EN with paying the appeal fee later, or, if he had nevertheless done so, it would not have been a problem for Ms EN to perform this task any time after having been entrusted with it.
3.5.4 Therefore, the case at hand cannot be compared with the case underlying decision T 1355/09 where an order in writing to pay the appeal fee was not carried out. In that case it was the task of the accounting department of the Appellant's parent company to effect all payments ordered by the Appellant, a small patent exploitation agency that employed only four persons. The Board found that the Appellant had no influence over the further execution of its orders, which were sent by internal post to the relevant department of its parent company and had been reliably carried out over the last years. The Board found that the risk of errors in this context was relatively low and came to the conclusion that no additional control mechanism had to be in place as had been found previously in decision T 836/09 regarding the checking of outgoing mail.
In the case at hand, on the contrary, it was the task of the patent department, i.e. the representative and his assistant, to effect the payment. Thus, the patent department had not yet done everything within its competence to file the appeal in time. Taking into account the difficulties of getting prompt information regarding the sufficiency of funds in the account (cf. sections 3.5.2. and 3.5.3 above), one can also not describe the procedure for paying fees as being low risk. Thus, the reasoning in decision T 1355/09 (reasons 1.4 - 1.7) does not apply here.
3.6 Thus, looking at the way the case was handled, the Board does not deem the monitoring system used by the Appellant to have been normally satisfactory.
3.7 Furthermore, the ultimate responsibility in observing time limits lies with the representative (see CLBA, III. E.5.5.2 e)). In the present case, he signed the letter of 1 September that contained a wrong statement regarding the payment of the appeal fee. He should have made sure that such payment had really been made. When transferring complete responsibility for this payment to his assistant - contrary to the routine procedure - he should have ensured that he performed the final cross-check himself. By jeopardising the possibility of a final cross-check, the principle of "due care" was violated.
3.8 To conclude, the omission in paying the appeal fee and the deletion from the docketing system of the time limit for paying such a fee was due to an apparently unsatisfactory monitoring system and lack of due care from the representative.
3.9 For these reasons, the request for re-establishment of rights is to be refused.
(...)
This decision T 2406/16 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:T240616.20170921. The file wrapper can be found here. Photo by Stefan Keller (kellepics) obtained via PixaBay under CC0 Creative Commons.
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